Ex Parte Vicari et al

Patent Trial and Appeal Board

Jun 23, 2016

12998026 (P.T.A.B. Jun. 23, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/998,026 03/10/2011 Richard Vicari S-002 US 5533
40256 7590 06/23/2016
FERRELLS, PLLC
P. O. BOX 312
CLIFTON, VA 20124-1706
EXAMINER
EASHOO, MARK
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
06/23/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
______________

Ex parte RICHARD VICARI, FLORIN BARSAN, and KIEN VAN PHUNG
______________

Appeal 2014-006150
Application 12/998,0261
Technology Center 1700
________________

Before CHUNG K. PAK, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Action2
rejecting claims 34–38. We have jurisdiction pursuant to 35 U.S.C. § 6.
We affirm.

1 Application 12/998,026, filed March 10, 2011, under 37 U.S.C. § 371, is the
national stage of PCT application US/2009/005098, filed on September 11, 2009,
which claims the benefit of US provisional application 61/096,756, filed on
September 12, 2008.
2 Final Action mailed February 14, 2013 (“Final Act.”). Remaining co-pending
claims 39–48 stand withdrawn from consideration by the Examiner as being drawn
to a nonelected invention.

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INTRODUCTION
The appealed subject matter relates to “a vinyl amine vinyl alcohol
copolymer . . . More particularly, it relates to a truly random vinyl amine
vinyl alcohol copolymer.” Amendment to Specification, filed Aug. 30, 2012,
p. 2.
Details of the appealed subject matter are recited in representative
independent claim 34, which is reproduced below from the Claim Appendix
to the Appeal Brief 3 (indentation and emphasis added):

34. A water-soluble copolymer formed by copolymerizing:
(a) from 99 to 1 mol% of N-vinylformamide and
(b) from 1 to 99 mol% of one or more vinyl C1–C10 alkyl
esters, and
then hydrolyzing from 30 to 100 mol% of the formyl groups
from the copolymerized units (a) to form amino groups and from 30
to 100 mol% of the C1–C10 alkyl ester groups from the
copolymerized units (b) to form hydroxyl groups, wherein
the copolymer is essentially free of amidine rings as
determined by 13C NMR and
exhibits compositional homogeneity as evidenced by
essentially one peak in a gradient elution chromatographic analysis.

3 Appeal Brief filed on November 22, 2013 (“App. Br.”).
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The Examiner maintains the following ground of rejection,4 which
is before us on appeal:
Claims 34–38 under 35 U.S.C. § 103(a) as unpatentable over the
teachings of Pinschmidt5.
DISCUSSION
As a preliminary matter, the Declaration of Robert Vicari filed under
37 C.F.R § 1.132, which was executed on August 20, 2013, and filed in
copending U.S. Application 12/998,036 (Application’036), was first
submitted in this application with the Appeal Brief, and therefore was not
timely filed. It will not be considered. 37 C.F.R § 41.33(d)(2).
The Declaration of Robert Vicari filed under 37 C.F.R § 1.132, which
was executed on April 13, 2011, and filed in Application’036, and the
August 8, 2012, Report of Richard Vicari, directed to the invention of
Application’036, were both submitted with the Appeal Brief. They will not
be considered. 37 C.F.R § 41.33(d)(1) and (d)(2). Although Appellants
criticize the non-entry of the Declaration and Report (App. Br. 4–5), we do
not have jurisdiction to consider this issue because it is a petitionable, not an
appealable, matter. Moreover, even if the Declaration and Report were
admitted and considered, they do not appear to be pertinent to the prior art
rejection before us. As noted by Appellants, “they contained FTIR and 13C
NMR analysis of the inventive copolymer.” App. Br. 4. The Declaration and
Report do not address the prior art rejection over Pinschmidt discussed infra.

4 Examiner’s Answer mailed on February 26, 2014 (“Ans.”) 2–5.
5 Pinschmidt, Jr. et al., US Patent No. 5,300,566; issued on April 5, 1994
(“Pinschmidt”).
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Appellants have argued for patentability based on independent
claim 34 and dependent claims 35 and 38, focusing on the perceived defects
of the teachings of Pinschmidt. App. Br. 5–15. Appellants have not raised
substantially distinct arguments for the patentability of the subject matter
recited in dependent claims 36 and 37. Id. Accordingly, we confine our
discussion to claims 34, 35, and 38. Dependent claims 36 and 37 stand or fall
together with claim 34. 37 C.F.R. § 41.37(c)(1)(iv)(2013).
ANALYSIS
Independent Claim 34
Appellants do not dispute the Examiner findings that Pinschmidt
would have suggested copolymerizing N-vinylformamide (NVF) and vinyl
acetate (VAc) to form a copolymer having a molar composition as recited in
claim 34, and then hydrolyzing the formyl groups and acetate groups of the
copolymer to form, respectively, amino groups and hydroxyl groups, in the
particular molar amounts recited in claim 34. Compare Ans. 2–4 with App.
Br. 5–8.
Rather, Appellants urge that Pinschmidt fails to suggest that the
copolymer has “the compositional homogeneity . . . required by Claim 34.”
App. Br. 8. In particular, Appellants urge that the Pinschmidt copolymer of
VAc and NVF is “characterized by substantial compositional drift as a result
of the polymerization process used in Pinschmidt” (emphasis added). Id
at 5, citing Pinschmidt example 1, col. 7, l. 21, to col. 9, l. 23. Appellants
urge that in the process taught by Pinschmidt, “continuous feed of both
monomers is not maintained” throughout the polymerization process. Id.
Appellants urge that “absence of continuous, simultaneous feed of both
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monomers results in copolymer having a varying composition, i.e., the
copolymer is characterized by composition drift” as shown by the copolymer
of Figure 1 of the Specification.6 Id. Appellants urge that “the copolymer of
Figure 1 is a reasonable approximation of the Pinschmidt copolymer.” Id.
at 11. Appellants (id.) urge that “the comparative Erkol [L12i] copolymer [of
VAc and NVF] is the same as the Pinschmidt copolymer with regard to the
presence of compositional drift,” as discussed in the Declaration filed under
37 C.F.R. § 1.132, executed by Richard Vicari on May 28, 2013, filed on
June 4, 20137 (“Vicari Declaration III”)], paragraph 5.
In response, the Examiner finds that Appellants have not provided any
evidence showing “that the representative or Erkol L12i copolymer used in
determining the compositional drift [in the Vicari Declarations I and III] was
made the same way as Pinschmidt.” Ans. 5. The Examiner concludes that
“the copolymer represented by Erkol L12i exerted by Figure 1 does not
constitute a proper comparison to the copolymer of Pinschmidt.” Id.
Vicari testifies that the Erkol L12i copolymer was prepared in a radical
polymerization in a stirred reactor where
[a]fter an initial charge [of both monomers VAc and NVF], both
monomers [NVF and VAc] were continuously fed to the reactor

6 According to the Declaration filed under 37 C.F.R. § 1.132, executed by
Richard Vicari on August 23, 2012, filed on August 30, 2012 (“Vicari
Declaration I”), paragraph 5, in Figure 1 of the Specification, the
“chromatograph presents multiple peaks, indicative of nonuniformity of the
copolymer composition . . . the chromatograph shows compositional drift,”
7 According to Appellants the Vicari Declaration III replaces the Declaration
filed under 37 C.F.R. § 1.132, executed by Richard Vicari on April 10, 2013,
filed on April 12, 2013 (“Vicari Declaration II”). “Supplemental Response
after Final” filed on June 4, 2013, p. 2.
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for 2 hours. After completion of the first continuous addition
N-vinylformamide was continuously added to the reactor for an
addition two hours. The copolymerization reaction proceeded
until all monomer was converted to copolymer, for a total
polymerization time of 16 hours.
Vicari Declaration III, paragraph 4 (emphasis added). However, as
acknowledged by Appellants, the polymerization process in Example 1 of
Pinschmidt uses two reactors – reactors I and II, where both reactors are
initially charged with both monomers NVF and VAc, an initiator, and the
catalyst tartaric acid. App. Br. 5; Vicari Declaration III, p. 8, “Schematic 2:
Pinschmidt.” In the Pinschmidt example 1 method, continuous feeds of both
monomers, the initiator, and the catalyst are added to reactor I and a continuous
feed of VAc, not NVF, is added to reactor II. Pinschmidt, Example 1, col. 7,
ll. 37–39, col. 7, l. 64, to col. 8, l. 15, col. 8, ll. 30–45. Pinschmidt teaches that
[w]hen the reactor temperatures approached 60oC, the feeds
were begun. The flow rates from reactor I to reactor II and from
reactor II to the paste collecting port were adjusted to maintain
reactor I and reactor II levels. Free monomer (vinyl acetate and
N-vinyl formamide) in reactors I and II was monitored
periodically by a titration method . . . The amount of catalyst
added into reactor I was varied to adjust percent vinyl acetate at
steady state.
Id. at Example 1, col. 7, ll. 38–48 (emphasis added). Pinschmidt teaches
“continuously withdrawing from the reaction vessel reaction mixture
containing the PVAc/PNVF” copolymer. Id. at col. 3, ll. 4–5. In addition, in
the Pinschmidt example 1, after forming the PVAc/PNVF copolymer, VAc is
removed from the copolymer to achieve a VAc “level below 0.1%.” Id. at
col. 7, ll. 57–61. Notwithstanding Appellants’ arguments to the contrary, the
process for forming the Erkol copolymer described in the Vicari
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Declaration III is not the same as the process taught by Pinschmidt because in
the Erkol process:
(1) only one reactor is used in forming the copolymer;
(2) no continuous feeds of initiator and catalyst are added along with
the continuous feeds of both monomers;
(3) no adjustment of flow rates are performed to maintain the reactor
level;
(4) no adjustment of catalyst is provided to adjust vinyl acetate at
steady state; and
(5) no continuous feeds of the monomer VAc and the polymerization
product formed in a first reactor are added to a second reactor to complete
polymerization of the copolymer.
Moreover, Pinschmidt teaches that NVF has “a higher reactivity than
vinyl acetate in the polymerization and [its] frequently lower levels of
incorporation minimize the amounts of these monomers present in the final
product.” Pinschmidt, col. 5, ll. 7–12. As the Examiner found, Pinschmidt
teaches that the PVAc/PNVF copolymer comprises 1–50 mole % of PNVF.
Ans. 3. In Example 1 of Pinschmidt, the synthesized copolymers comprise 6
or 12 mole % of PNVF. Pinschmidt, Example 1, col. 7, l. 64, col. 8, ll. 1, 31.
The Vicari Declaration III, paragraph 4, does not describe the PNVF molar
amount of the Erkol L12i copolymer. In addition, Appellants admit that “the
Erkol copolymer is not identical to that of Pinschmidt.” Reply Brief filed on
April 24, 2014 (“Reply”) 4.
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On this record, Appellants have not provided any credible evidence to
show that the process forming the Erkol L12i copolymer is the same as the
process taught by Pinschmidt. Nor have Appellants provided any credible
evidence to show that the Erkol L12i copolymer has a molar composition,
e.g., 6 or 12 mol% of PNVF, as taught by Pinschmidt. Accordingly, we
agree with the Examiner’s conclusion that the Erkol L12i is not a probative
comparison to the PVAc/PNVF copolymers taught by Pinschmidt.
Furthermore, Pinschmidt teaches that when the inventive copolymers
are prepared by a free radical continuous process, the process “gives more
uniform molecular weight distribution and uniformity of comonomer
incorporation (i.e., substantially random homogeneous copolymer) improves
the lot-to-lot uniformity.” Pinschmidt. col. 3, l. 65, to col. 4, l. 2 (emphasis
added). As discussed supra, the process taught by Pinschmidt in Example 1
is a free-radical continuous process. On this record, there is no credible
evidence to support the Vicari Declaration III, paragraph 5, statement that the
Erkol L12i copolymer and the Pinschmidt copolymer “are the same as
regards compositional drift.” Appellants have not shown that the
PVAc/PNVF copolymer made by the process taught by Pinschmidt exhibits a
“compositional drift,” as shown by the copolymer Erkol L12i in the
Specification Figure 1.
Appellants further urge that the compositional drift in the copolymer
taught by Pinschmidt is also evidenced by lengthy hydrolysis times disclosed
by Pinschmidt. App. Br. 6–8, citing Pinschmidt, the paragraph bridging
cols. 5–6, and the Examples beginning with Example II, col. 9, l. 25.
Appellants urge that “if a copolymer is too ‘blocky,’ i.e., if comonomers are
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closely grouped in the copolymer backbone, catalytic saponification [of the
acetate groups] is not possible” (emphasis added). Id. at 7. Appellants urge
that
a ‘blocky’ copolymer will produce amidine groups due to the
proximity of amide groups . . . the formation of amidine groups
competes with the hydrolysis of amide groups to amine groups.
Therefore, the overall hydrolysis reaction rate is slower. In
addition, some of the amidine rings may hydrolyze back to
amine and amide groups during the reaction. Due to these
competing reactions, substantial amide groups remain after
hydrolysis of a ‘blocky’ copolymer.
Id. (emphasis added).
However, as discussed supra, Pinschmidt teaches that the PVAc/PNVF
copolymers produced by a free-radical continuous process are “substantially
random homogeneous copolymers.” Furthermore, the Examiner finds that
Pinschmidt teaches “complete hydrolysis of the copolymer.” Ans. 6, citing
Pinschmidt, col. 5, ll. 18–32, and Example V. Pinschmidt (col. 5, ll. 25–28)
teaches that the “level of PVAc hydrolysis is adjusted by varying the base
addition level and reaction time, but becomes essentially complete during
base initiated PNVF hydrolysis in the subsequent step” (emphasis added).
In Pinschmidt Examples V, the PVAc/12 mole% PNVF copolymer is
hydrolyzed to form a copolymer of polyvinyl alcohol (PVOH) and polyvinyl
amine (PVAm), where “NMR analysis indicated complete hydrolysis”
(emphasis added) of the PVAc and PVNF. Pinschmidt, Example V, col. 12,
ll. 33-34. On this record, the teachings in Pinschmidt do not support
Appellants’ arguments that Pinschmidt’s lengthy hydrolysis times provides a
copolymer exhibiting a “compositional drift” as shown by the copolymer
Erkol L12i in the Specification Figure 1.
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In the Reply Brief, Appellants urge that the Erkol copolymer
represents “closer prior art than the Pinschmidt copolymers.” Reply 5.
Appellants urge that they have provided “factual statements by an expert [in
the Vicari Declaration III] that the Erkol copolymer and the Pinschmidt
copolymer are comparable [as to compositional drift].” Reply 4.
Appellants urge that the Examiner “has not given the evidence of the
Declaration due weight . . . [and] there is no logical reason for requiring the
Appellant to make a comparison with the Pinschmidt copolymer instead of
the commercially available and comparable Erkol copolymer.” Reply 4.
Appellants’ arguments are not persuasive. For the reasons discussed
supra, on this record, there is no credible evidence to support the Vicari
Declaration III, paragraph 5, statement that the Erkol L12i copolymer and
the Pinschmidt copolymer “are the same as regards compositional drift.” As
discussed supra, Pinschmidt teaches that the PVAc/PNVF copolymers
produced by a free-radical continuous process as taught by Pinschmidt are
“substantially random homogeneous copolymers.” As discussed supra,
Pinschmidt teaches complete hydrolysis of those PVAc/PNVF copolymers,
as indicated by NMR analysis. “[M]ere conclusions are set forth therein
without cogent, supporting reasons . . . If, as affiants stated, ‘no reasonable
interpretation’ can equate the two [compounds], affiants should have
submitted factual substantiation of that contention. The affidavits, however,
fail to offer the bases upon which their conclusions are built.” In re
Grunwell, 609 F.2d 486, 491 (CCPA 1979), citing In re Payne, 606 F.2d
303, 315 (CCPA 1979); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and
conclude that the lack of factual corroboration warrants discounting the
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opinions expressed in the declarations.”). See also Velander v. Garner, 348
F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to prior
publications than to subsequent conclusory statements by experts, the Board
acted well within [its] discretion.”). Thus, on this record, Appellants have
not demonstrated that the Erkol copolymer referred to in both the
Specification and the Vicari Declarations represents closer prior art than the
Pinschmidt copolymer or comparable to the Pinschmidt copolymer. Stated
differently, Appellants have not shown that the PVAc/PNVF copolymers
made by the process taught by Pinschmidt exhibit a “compositional drift,” as
shown by the copolymer Erkol L12i in the Specification Figure 1.
Accordingly, in view of the teachings of Pinschmidt, we find no error in the
Examiner’s determination that a person having ordinary skill in the art
would have reasonably expected that PVAc/PNVF copolymers made by the
process taught by Pinschmidt would have uniformity of comonomer
incorporation, i.e., “substantially random homogeneous copolymers.” Those
substantially random homogeneous copolymers taught by Pinschmidt meet
or would have suggested the “complete homogeneity” limitation recited in
claim 34.
Appellants further argue that Pinschmidt fails to suggest that the
copolymer has “freedom from amidine rings required by Claim 34.” App.
Br. 8. Claim 34 recites that the hydrolyzed copolymer is “essentially free of
amidine rings as determined by 13C NMR.”
Appellants’ arguments are not persuasive. As discussed supra,
Appellants urge that when the hydrolyzed copolymer comprises amidine
rings, “some [of the amidine rings] may hydrolyze back to amine and amide
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groups during the reaction. Due to these competing reactions, substantial
amide groups remain after hydrolysis of a ‘blocky’ copolymer.” App. Br. 7.
However, as discussed supra, Pinschmidt teaches complete hydrolysis of the
PVAc and PNVF groups, as indicated by NMR, in the PVAc/PVNF
copolymer made by the process taught by Pinschmidt. Because Pinschmidt
teaches that there is complete hydrolysis of the PNVF groups in the
exemplified hydrolyzed copolymer, and that complete hydrolysis was
indicated by an NMR analysis, a person having ordinary skill in the art
would have reasonably expected that a hydrolyzed PVAc/PNVF copolymer
made by the process taught by Pinschmidt would be “essentially free of
amidine groups,” as recited in claim 34. On this record, Appellants have not
come forward with any credible evidence to the contrary.
Appellants urge that the Examiner has “dismissed salient features of
Claim 34 as product-by-process; which features are structural.” App. Br. 10.
In particular, Appellants (id.) urge that claim 34
requires a product that is structurally different from than that of
the prior art . . . [t]he inventive copolymer is prepared by a
process that imparts unique structural characteristics and
properties to the final product, as characterized by extension
saponification requirements and the presence of a single peak in
gradient elution chromatograpbic analysis, which are not present
in the Pinschmidt product.
Appellants’ arguments are not persuasive. As found by the Examiner,
Pinschmidt teaches copolymerization of the monomers PVAc and NVF to
form a PVAc/PNVF copolymer; and then hydrolyzing the acetate and
formyl groups in the copolymer to form a polyvinyl alcohol and polyvinyl
amine copolymer. Ans. 3–4. The Pinschmidt process steps meet the
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“copolymerizing” step and “hydrolyzing” step recited in product claim 34.
Furthermore, as discussed supra, Pinschmidt teaches that PVAc/PNVF
copolymers produced by a free-radical continuous process are “substantially
random homogeneous copolymers.” For the reasons discussed supra, a
person having ordinary skill in the art would have reasonably expected that a
hydrolyzed PVAc/PNVF copolymer made by the process taught by
Pinschmidt would be “essentially free of amidine groups,” as recited in
claim 34. Accordingly, in view of the teachings of Pinschmidt, we find no
reversible error in the Examiner’s finding that a person having ordinary skill
in the art would have reasonably expected that the copolymer made by the
process taught or suggested by Pinschmidt would be the same or
substantially the same as the copolymer made by the process steps recited in
product claim 34. For the reasons discussed supra, on this record,
Appellants have not come forward with credible evidence to the contrary.
Dependent Claims 35 and 38
Appellants urge that claims 35 and 38, which depend from claim 34,
are patentable for at least the reasons discussed supra. App. Br. 14–15.
Appellants urge that Pinschmidt does not disclose that the copolymers have
an “APHA color value of less than or equal to 100 APHA units,” as recited
in claim 35, or a “turbidity value . . . . in solution of less than 100 turbidity
units” as recited in claim 38. Id. Appellants urge that “a copolymer having
compositional drift exhibits yellowing, whereas the inventive copolymer
does not.” Id. at 14. Appellants urge that “a copolymer having
compositional drift exhibits substantial turbidity values, whereas the
inventive polymer is substantially free of turbidity.” Id. at 15.
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Appellants’ arguments are not persuasive. As discussed supra,
Appellants have not shown that the copolymers made by the process taught
by Pinschmidt exhibit a “compositional drift,” as shown by the copolymer
Erkol L12i in the Specification Figure 1. For the reasons discussed supra, a
person having ordinary skill in the art would have reasonably expected that
copolymers made by the process taught by Pinschmidt would be the same or
substantially the same as the copolymer made by the process steps recited in
product claim 34. As discussed, that person would have expected
reasonably that those copolymers would have uniformity of comonomer
incorporation, which meets the “complete homogeneity” limitation recited in
claim 34. Thus, although Pinschmidt does not explicitly disclose that the
copolymers have a color value or exhibit a turbidity as recited in claims 35
and 38, respectively, that person would have reasonably expected that those
copolymers would further exhibit the color value and turbidity value as
recited in claims 35 and 38, respectively. It is well-settled that recognition
of a new characteristic of an old or obvious composition – i.e., a
characteristic that flows naturally from the suggestions of the prior art–
without more, is insufficient to establish nonobviousness. In re Kubin, 561
F.3d 1351, 1357 (Fed. Cir. 2009) (“Even if no prior art of record explicitly
discusses the [limitation], [applicant's] application itself instructs that [the
limitation] is not an additional requirement imposed by the claims on the
[claimed invention], but rather a property necessarily present in [the claimed
invention]”); and Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) (“The
fact that appellant has recognized another advantage which would flow
naturally from following the suggestion of the prior art cannot be the basis
for patentability when the difference would otherwise have been obvious.”)
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Accordingly, we find that Appellants have not identified reversible
error in the Examiner’s prima facie case of obviousness regarding the
subject matter recited in clams 34–38 within the meaning of 35 U.S.C.
§ 103(a).
Appellants’ evidence of unexpected results
Appellants urge that the claimed invention provides “superior results
and surprising results” in solubility and transparency, and lack of haze, and
an absence of color-imparting bodies, as discussed in the Vicari
Declarations I and III. App. Br. 12–14.
We agree with the Examiner’s conclusion that Appellants have not
demonstrated that the showings in the Vicari Declarations I and III are
sufficient to overcome the prima facie case of obviousness. Ans. 6. In
particular, we agree with the Examiner’s conclusion that the showings in the
Vicari Declarations I and III do not compare the claimed invention against
the closest prior art of Pinschmidt. Id. at 5–6. The Vicari Declarations I
and III use the Erkol L12i copolymer as being representative of the
copolymers taught by Pinschmidt. Vicari Declaration I, paragraphs 7–10;
Vicari Declaration III, paragraphs 3, 5, 7, 9. For the reasons discussed supra,
the Erkol L12i copolymer referred to in the Vicari Declarations is not
comparable to the Pinschmidt copolymers or closer to the claimed
copolymers than the Pinschmidt copolymers. As discussed supra, the
Pinschmidt copolymers are the closest prior art to the copolymer recited in
claim 34. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991)
("[W]hen unexpected results are used as evidence of nonobviousness, the
results must be shown to be unexpected compared with the closest prior art.")
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Because the showings in the Vicari Declarations I and III do not
provide probative comparisons between the Pinschmidt copolymers and the
claimed copolymer, it is not clear whether the presently claimed copolymer
provides the alleged unexpected results over the closest prior art,
Pinschmidt. Put another way, Appellants fail to show that the presently
claimed copolymer provides unexpected results over the closest prior art.8
In the Reply, Appellants urge that the Examiner “ignores that results
achieved with the present invention are unexpectedly superior over the prior
art. Reply 5–6.
Appellants’ arguments are not persuasive. The Examiner has not
ignored Appellants’ showing in the Vicari Declarations I and III. As
discussed supra, the Examiner has provided reasons why Appellants fail to
demonstrate that the Declarations are sufficient to show that the claimed
copolymer provides unexpected results over the closest prior art. In re

8 In the event of further prosecution, both the Examiner and Appellants are
advised to determine whether the showing relied upon by Appellants is
reasonably commensurate in scope with the degree of protection sought by
the claims, especially in terms of the percentages and types of monomers
included in the claims relative to the percentages and type of monomers used
in the showing. See, e.g., In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005)
(“Even assuming that the results were unexpected, Harris needed to show
results covering the scope of the claimed range. Alternatively Harris needed
to narrow the claims.”); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978)
(“Establishing that one (or a small number of) species gives unexpected
results is inadequate proof, for ‘it is the view of this court that objective
evidence of non-obviousness must be commensurate in scope with the claims
which the evidence is offered to support.’”) (quoting In re Tiffin, 448 F.2d
791, 792 (CCPA 1971)).

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Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (to show unexpected results,
Appellants must establish: “(1) that there actually is a difference between the
results obtained through the claimed invention and those of the [closest] prior
art, . . . and (2) that the difference actually obtained would not have been
expected by one skilled in the art at the time of invention”) (citation omitted);
In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (“the burden of showing
unexpected results rests on he who asserts them”).
Having fully considered the evidence and arguments advanced by both
the Examiner and Appellants anew, we determine that the Examiner has not
erred in concluding that the evidence of nonobviousness relied upon by
Appellants is not sufficient to outweigh the evidence of obviousness relied
upon by the Examiner within the meaning of 35 U.S.C. § 103(a).
DECISION
We AFFIRM the rejection of claims 34–38 under 35 U.S.C.
§ 103(a).
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED