Appeal 2007-0105
Application 10/698,607
“mono-methacryloyloxyethyl succinate.” We are not persuaded otherwise by
the fact that Appellant describes this monomer as “hydrophobic” while
Idogawa describes using the free acid form of the compound because Idogawa
further discloses that this monomer has limited solubility. Indeed, this
monomer is used in the free acid form in the process illustrated in Idogawa’s
Example 1 just as it is in Appellant’s Example 1. Thus, we find as a matter of
fact that Idogawa’s Example 1 satisfies all of the limitations of claim 6. To
the extent that Appellant contends a different product results from the claimed
method encompassed by claim 6, we note the guidance of a predecessor court
to our reviewing court in In re Sussman, wherein the claimed and prior art
method steps were the same: “[I]f appellant obtains a new product through
reaction of the elements mentioned, it must be due to some step in the process
not included in the claim.” 141 F.2d 267, 269-70, 60 USPQ 538, 541 (CCPA
1944).
Thus, the Examiner has established that prima facie Idogawa satisfies
all of the elements of claim 6 in a manner sufficient to have placed a person
of ordinary skill in the art in possession thereof, see In re Spada, 911 F.2d
705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990), and accordingly, we
affirm the ground of rejection of claims 6, 9, and 10 as a matter of fact under
35 U.S.C. § 102(b).
Furthermore, Appellant does not dispute the Examiner’s conclusion
that prima facie one of ordinary skill in the art would have modified
Idogawa’s method to include recovery of the product by filtration from the
reaction mixture as taught by Winnik, which step is specified in
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