Appeal 2007-1224
Application 10/628,725
The relevant part of Lühmann relied upon by the Examiner to support
the inherency finding is as follows:
The self-adhesive compositions used are preferably those
based on block copolymers comprising polymer blocks formed
from vinylaromatic compounds (A blocks), preferably styrene,
and those formed by polymerization of 1,3-dienes (D blocks),
preferably butadiene and isoprene. Both homo- and copolymer
blocks can be used in accordance with the invention. Resulting
block copolymers may contain identical or different D blocks,
which can be partially, selectively or completely hydrogenated.
(Lühmann, col. 3, ll. 42-50).
The relied upon portion of Lühmann does not adequately support the
Examiner’s finding that the fraction of 1,2-linked dienes in the block
copolymer would be inherently selectively hydrogenated as claimed in the
process of Lühmann. In general, a limitation is inherent if it is the “natural
result flowing from” the explicit disclosure of the prior art. Schering Corp.
v. Geneva Pharms., Inc., 339 F.3d 1373, 1379, 67 USPQ2d 1664, 1669 (Fed.
Cir. 2003). “Inherency ... may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.” Mehl/Biophile Int'l. Corp. v. Milgraum,
192 F.3d 1362, 1365, 52 USPQ2d 1303, 1305 (Fed. Cir. 1999)(quoting In re
Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981)).
We agree with the Examiner that polymerizing the 1,3 dienes
(butadiene and/or isoprene) will necessarily result in both 1,2-links and 1,4-
links in the D blocks of Lühmann’s block copolymers. In fact, Appellant’s
own Specification supports this finding when it states that “[i]n the
preparation of block copolymers based on vinylaromatics, preferably styrene
and 1,3-dienes, especially isoprene and butadiene, both 1,2-linked and 1,4-
4
Page: Previous 1 2 3 4 5 6 Next
Last modified: September 9, 2013