Appeal 2007-3412
Application 10/832,450
a superior property was unexpected, the court should have considered what
properties were expected.")
Moreover, the 39–40 parts plasticizer in Toyama resulted in many Tgs
of 5–10°C. Thus, we find that the evidence of record tends to support the
Examiner's conclusion that the higher range of plasticizers taught in the
D'Errico patents or by Toyama would inherently have the required Tg of
23°C or less. (Final Rejection7 at 5; Answer at 5–6.) The burden has been
shifted properly to D'Errico to show that the prior art plasticized PVBs do
not have a Tg of 23°C or less. D'Errico has not, however, made the required
showing.
Furthermore, Toyama's Comparative examples 11 and 13, which have
significantly higher Tgs (Comparative example 11 has a Tg of 21°C;
Comparative example 13 has a Tg of 37°C) indicate that the nature of the
PVB may also be an important parameter for Tg, and that the amount of
plasticizer is not necessarily the controlling parameter. For this additional
reason, it is far from clear that the single comparison in D'Errico's
Specification is reasonably indicative of unexpected results commensurate in
scope with the claimed subject matter. Pfizer, 480 F.3d at 1370, 82 USPQ2d
at 1338.
Finally, we note as an aside, that Comparative example 15 in Toyama
appears8 to anticipate claim 1, as it describes a laminated glass comprising
7 Final Office Action mailed 22 June 2006 ("Final Rejection").
8 On the record before us, it is not certain that Toyama is prior art under 35
U.S.C. § 102(e) against the present claims, but D'Errico has waived
argument on that issue. In any event, we observe that Toyama's related EP
patent publication, EP 1,281,690 A1, has the same disclosure and is a 102(b)
16
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: September 9, 2013