Appeal 2007-1945
Application 10/669,215
opinion, the evidence of obviousness, on balance, outweighs the evidence of
nonobviousness proffered by the Appellants. In re Nolan, 553 F.2d 1261,
1267, 193 USPQ 641, 645 (CCPA 1977).
Second, as also correctly found by the Examiner at pages 6-7 of the
Answer, the Appellants have not demonstrated that the claimed subject
matter imparts unexpected results over the closest prior art, Sublett. In re
Johnson, 747 F.2d 1456, 1461, 223 USPQ 1260, 1263-64 (Fed. Cir. 1984).
We deem Sublet to be the closest prior art since it reduces the formation of
undesirable yellow color as desired by the Appellants in their Specification
via preparing the polyester of its blend with a specific titanium-containing
catalyst system (encompassed by the appealed claims) in an amount
corresponding to 10-100 ppm titanium. Sublett exemplifies employing a
specific catalytic system in an amount corresponding to 50 ppm titanium
(cols. 5-6, Table 1). The Appellants have not shown that the claimed
thermoplastic containing, inter alia, a polycarbonate and a polyester
prepared with 30 ppm or below titanium in the form of Sublett’s catalyst
system is unexpectedly superior to Sublett’s composition containing, inter
alia, a polycarbonate and a polyester prepared with 50 ppm titanium in the
form of Sublett’s catalyst system.
Finally, we find that the showing in the Specification is not
commensurate in scope with the degree of protection sought by the appealed
claims. In re Grasselli, 713 F.2d 731, 743, 218 USPQ 769, 778 (Fed. Cir.
1983); In re Kollman, 595 F.2d 48, 55, 201 USPQ 193, 198 (CCPA 1979).
While the showing is limited to a blend made of a specific polyester
prepared in the presence of an unknown titanium based compound (an
13
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: September 9, 2013