Board of Patent Appeals and Interferences

Patent and Trademark Office (P.T.O.)

 

*1 EX PARTE ARTHUR W. ANDERSON, GELU S. STAMATOFF AND E.I. DU PONT DE

NEMOURS & CO.

Appeal No. 90-2106

May 11, 1991

HEARD: October 11, 1990

 

 

 Request filed September 21, 1988, Control No. 90/001,604, by Harry J. Roper for the Reexamination of Arthur W. Anderson and Gelu S. Stamatoff Patent No. 4,076,698, issued February 28, 1978, based on application Serial No. 632,416, filed January 4, 1957. Hydrocarbon Interpolymer Compositions.

 

 

 Application filed October 20, 1980, Serial No. 198,832 for the Reissue of  Patent No. 4,076,698, based on application Serial No. 632,416 filed January 4, 1957, granted February 28, 1978, and a Continuation-in-Part of Serial No. 568,707, filed March 1, 1956, now Abandoned. Hydrocarbon Interpolymer Compositions.

 

 

John O. Tramontine et al. for Appellants

 

 

Primary Examiner--Edward J. Smith

 

 

Before Seidleck, Goolkasian and W. Smith

 

 

Examiners-in-Chief

 

 

W. Smith

 

 

Examiner-in-Chief

 

 

 This is an appeal from the final rejection of claims 1, 3, 4, 6, 8, 9, 11 through 13, 15 through 20, 23, 24, and 26 through 41, all of the claims pending in this merged reissue/reexamination proceeding of U.S. Patent No. 4,076,698 ('698 patent) owned by E.I. Du Pont de Nemours and Company (Du Pont). Claims 1, 3, 4, 6, 8, 9, 11 through 13, and 15 are original claims in the '698 patent. Claims 16 through 20, 23, 24, and 26 through 41 were added during the reissue/reexamination proceeding.

 

 

 The claimed subject matter is directed to interpolymers [FN1] of ethylene and alpha-olefins having 5 to 18 carbon atoms. For a complete understanding of the claimed subject matter, reference is made to the claims on appeal, a copy of which, as they appear in Du Pont's Appeal Brief, is appended to this decision.

 

 

BACKGROUND

 

 The '698 patent issued on February 28, 1978, from Serial No. 632,416, filed January 4, 1957, which is a continuation-in-part of Serial No. 568,707, filed March 1, 1956. Du Pont filed this reissue application on October 20, 1980. Phillips Petroleum Company (Phillips), The Dow Chemical Company (Dow), and Mobil Oil Corporation (Mobil) filed protests to the reissue application under 37 CFR § 1.291 and were granted active protestor status in a decision by the Office of the Assistant Commissioner for Patents under the rules governing protests then in effect (RI [FN2], Paper No. 10, Nov. 6, 1981) [FN3].

 

 

 Phillips was sued by Du Pont for infringement of claims 1, 2, 5, 10, 12, and 14 of the '698 patent on November 13, 1981, Civil Action 81-508, United States District Court for the District of Delaware. In a decision dated February 26, 1987, Du Pont v. Phillips Petroleum Co., 656 F.Supp. 1343, 2 USPQ2d 1545 (D.Del.1987) (Du Pont I), the district court found, inter alia, that Phillips had not carried its burden of proving invalidity of any of the asserted claims of the '698 patent. The district court decided, inter alia, that Phillips had not established that the asserted claims were indefinite under 35 USC § 112, second paragraph, in setting forth Elmendorf Tear Strength (ETS) values, or under 35 USC § 102(g) as anticipated by copolymers prepared by two researchers, Witt and Leatherman, at Phillips in 1955.

 

 

  *2 Upon appeal, the district court's decision was affirmed-in-part, reversed-in-part, vacated-in-part, and remanded for further proceedings by the Court of Appeals for the Federal Circuit in a decision decided on June 15, 1988, Du Pont v. Phillips Petroleum Co., 849 F.2d 1430, 7 USPQ2d 1129 (Fed.Cir.1988), cert. denied, 109 S.Ct. 542 (1988) (Du Pont II). The Federal Circuit held that claims 2, 5, 10, and 14 of the '698 patent were invalid as being anticipated by the copolymers made by two Phillips' researchers, Messrs. Witt and Leatherman, in 1955, and that the district court had erred when interpreting claims 1 and 12. This error necessitated reversal of the district court's decision in regard to these two claims and remand so that the district court could address, inter alia, the validity issue of these claims when properly interpreted. Upon remand, the district court again found that Phillips had not sustained its burden of proof in establishing the invalidity of the remaining claims, i.e., claims 1 and 12. Du Pont v. Phillips Petroleum Co., 711 F.Supp. 1205, 11 USPQ2d 1081 (D.Del.1989) (Du Pont III).

 

 

 Phillips filed a request for reexamination of the '698 patent on September 21, 1988. The request was granted and the resulting reexamination proceeding was merged with the ongoing reissue proceeding sua sponte by the Assistant Commissioner for Patents (RX Paper No. 6, Jan. 11, 1989). That decision directed the merged proceedings be conducted under the broader rules pertaining to examination of reissue applications (RX Paper No. 6, page 5).

 

 

 During prosecution, Du Pont cancelled patented claims 2, 5, 10, and 14 which were held by the Federal Circuit to be anticipated and added claims 16 through 41. Of the claims newly added during these proceedings, claims 21, 22, and 25 have been cancelled. The examiner instituted and maintained a number of rejections through this appeal under 35 USC §§ 102, 103, and 112, first and second paragraphs. Phillips asserted in the litigation that the '698 patent was invalid for grounds and reasons similar to certain of the rejection the examiner now maintains.

 

 

 The examiner relies upon the following references:

 

 

 

Brown                           2,728,752                         Dec. 27, 1955

                                                         (Filed Nov. 18, 1952)

Brebner et al. (Brebner         2,822,357                          Feb. 4, 1958

 '357)                                                                         

                                                         (Filed Jan. 28, 1955)

Hogan et al. (Hogan)            2,825,721                          Mar. 4, 1958

                                                   (Filed Mar. 26, 1956) [FN4]

Brebner ('518)                  2,839,518                         June 17, 1958

                                                         (Filed Mar. 22, 1955)

Anderson et al.                 2,862,917                          Dec. 2, 1958

 (Anderson '917)                                                               

                                                          (Filed Dec. 6, 1955)

Anderson et al.                 2,905,645                         Sep. 22, 1959

 (Anderson '645)                                                               

                                                         (Filed Aug. 16, 1954)

Vandenberg ('690)               3,051,690                         Aug. 28, 1962

                                                         (Filed Jul. 29, 1955)

Vandenberg ('963)               3,058,963                         Oct. 16, 1962

                                                          (Filed Apr. 7, 1955)

Nowlin et al. (Nowlin)          3,219,649                         Nov. 23, 1965

                                                         (Filed Jul. 11, 1955)

Haven, Jr. (Haven)              3,257,367                         June 21, 1966

                                                         (Filed June 23, 1955)

Natta et al. (Natta)            3,582,987                          June 1, 1971

                                                          (Filed Jun. 8, 1955)

FN4 Hogan is prior art to the claims of the '698 patent only if they are not    

 entitled to the benefit of the earlier filing date of the parent application  

 under 35 USC § 120. Du Pont has not contested the availability of this        

 reference as prior art.                                                       

 

*3 Buckley et al. (Buckley), "The Decomposition of Aliphatic Diazo-Compounds By Trimethyl Borate: The Preparation of Branched-Chain Paraffins Of High Molecular Weight", Imperial Chemical Industries Limited", Section 709, pages 3701-3704 (April 1952).

Richards, "Polyethylene-Structure, Crystallinity And Properties", J.Appl.Chem., Vol. I, pages 370-376 (Aug.1951).

 

 

 In addition, the examiner relies upon the work performed by Witt and Leatherman which was involved in the litigation of the '698 patent as prior are under 35 USC § 102(g). This work is summarized in an admission made by Du Pont during the Phillips litigation which reads:

   DuPont judicially admits that before the date of DuPont's invention of the patent in suit, Gerald T. Leatherman and Donald R. Witt, researchers at Phillips, made in the United States copolymers of ethylene with propylene, ethylene with 1-butene, ethylene with 1-pentene and ethylene with 1-hexene. That those ethylene with 1-pentene copolymers had comonomer-type, density, melt index, percent crystalinity [sic] and weight percent comonomer content falling within the ranges expressly called for by the claims asserted against Phillips in this action.

   That those ethylene-1-hexene copolymers had comonomer-type, density, percent crystallinity and weight percent comonomer content falling within the ranges expressly called for by the claims asserted against Phillips in this action and melt indices of 0.19 and 0.27.

   DuPont will not attempt to prove in this action that the invention of the patent in suit was made by DuPont before the dates that those ethylene-1- pentene copolymers and ethylene-1-hexene copolymers were made by Gerald T. Leatherman and Donald R. Witt.

 

 

ISSUES

 

 1. What deference the district court decisions are entitled to in regard to the rejections on appeal which are similar to certain of the defenses asserted by Phillips in the litigation.

 

 

 2. The correctness of the following rejections:

   A. Claims 1, 11, 33, and 37 under 35 USC § 112, second paragraph, as being indefinite in regard to the statement of the ETS values recited therein.

   B. Claim 37 under 35 USC § 112, first paragraph, as lacking written descriptive support in the original disclosure for the relationship of carbon atoms per molecule of alpha-olefin to ETS values recited in this claim.

   C. Claims 16 through 20, 23, 24, 27 through 31, 40, and 41 under 35 USC § 112, second paragraph, as being indefinite in regard to the terms "comparable" and "superior" as they are used in these claims.

   D. Claims 16 through 20, 23, 24, 27 through 31, 40, and 41 under 35 USC § 112, first paragraph, as lacking written description in the original disclosure for the terms "comparable" and "superior."

    *4 E. Claims 1, 11, 19, 20, 24, and 26 through 39 under 35 USC § 102(g) as anticipated by the interpolymers made by Witt and Leatherman in 1955, as evidenced by (1) the judicial admission made by Du Pont in the Phillips litigation, (2) the determination by the Federal Circuit in the litigation that the work performed by the two researchers is prior art under this section of the statute and/or (3) the actual work performed by Witt and Leatherman in 1955.

   F. Claims 3, 4, 6, 8, 9, 12, 13, 15 through 18, 23, 40, and 41 under 35 USC § 103 as unpatentable over the Witt and Leatherman interpolymers in view of Vandenberg '963, Anderson '645, or Hogan.

   G. Claims 1, 3, 4, 6, 8, 9, 11 through 13, 15 through 20, 23, 24, and 26 through 41 under 35 USC § 103 as unpatentable over Vandenberg '963 in view of Vandenberg '690, Brebner '518, Brebner '357, Anderson '917, Richards, Buckley, and Anderson '645.

   H. Claims 1, 3, 4, 6, 8, 9, 11 through 13, 15 through 20, 23, 24, and 26 through 41 under 35 USC § 103 as unpatentable over Anderson '645 in view of Haven, Natta, Richards and Buckley.

   I. Claims 1, 3, 4, 6, 8, 9, 11 through 13, 15 through 20, 23, 24, and 26 through 41 under 35 USC § 103 as unpatentable over Nowlin in view of Brebner '357, Brebner '518, Anderson '917, Richards, Buckley, and Anderson '645.

   J. Claims 11 [FN5] and 27 through 30 under 35 USC § 102(e) as anticipated by Brown.

   K. Claims 12, 13, 15, and 26 under 35 USC § 103 as unpatentable over brown.

 

 

OPINION

 

 We have carefully considered the record before us in this appeal and conclude that Rejections A, C, D, E, F, G, H, I, J, and K are proper and, therefore, affirm these rejections. We reverse Rejection B.

 

 

The District Court Decisions

 

 Du Pont argues that the examiner failed to give deference to the findings of the district court in regard to the defenses raised by Phillips and rejected by the District court which are similar to certain of the rejections now maintained. Relevant to this issue is the decision in Ethicon Inc. v. Quigg, 849 F.2d 1142, 7 USPQ2d 1152 (Fed.Cir.1988), where the Federal Circuit set forth that due to the different standards of proof used in the different forums, it would not be unreasonable for the Patent and Trademark Office (PTO) to determine the claims of a patent undergoing reexamination to be unpatentable after the same claims were determined by a district court to be not invalid.

 

 

 After the decision in Ethicon issued, the Commissioner of Patents and Trademarks issued a notice regarding "Reexamination Litigation Policy", (1099 OG 16, Feb. 14, 1989) which in pertinent part states:

    *5 The issuance of a final district court decision upholding validity during a reexamination also will have no binding effect on the examination of the reexamination. This is because the Court stated in Ethicon that the PTO is not bound by a court's holding of patent validity and should continue the reexamination. The Court notes that district courts and the PTO use different standards of proof in determining invalidity and thus on the same evidence could quite correctly come to different conclusions. Specifically, invalidity in a district court must be shown by "clear and convincing" evidence, whereas in the PTO it is sufficient to show nonpatentability by a "preponderance" of evidence. Since the "clear and convincing" standard is harder to satisfy than the "preponderance standard," deference will ordinarily be accorded to the factual findings of the court where the evidence before the PTO and the court is the same. If sufficient reasons are present, claims held valid by the court may be rejected in reexamination. (emphasis in original)

 

 

 Thus, it is clear that the PTO is not bound by the district court's decision that Phillips had not sustained its burden of proof in establishing the invalidity of the asserted claims for grounds and reasons which are similar to certain of the examiner's rejections. However, the findings of fact made by the district court based upon the evidence and testimony presented during the trial [FN6] are as stated in the Commissioner's policy statement "ordinarily entitled to deference." It is apparent from a review of the Examiner's Answer that the examiner did take the district court's decisions into account where appropriate when the Answer was prepared. We have also considered the relevant district court's findings of fact in determining the correctness of the rejections which parallel certain of Phillips invalidity defenses as discussed infra.

 

 

Rejections Under 35 USC § 112, First and Second Paragraphs

 

Rejection A

 

 The issue presented is whether claims 1, 11, 33, and 37 are indefinite under  35 USC § 112, second paragraph, in their recitation of ETS values. The examiner is of the opinion that those skilled in the art would not be reasonably apprised of the metes and bounds of these claims since the '698 patent does not disclose how the film samples were prepared from which the claimed ETS values were measured, i.e., whether the samples were molded or extruded and how thick the samples were. (Examiner's Answer, pages 3-4)

 

 

 As set forth in In re Moore, 439 F.2d 1232, 169 USPQ 236 (CCPA 1971), it must be determined:

   "whether the claims do, in fact, set out and circumscribe a particular area with a reasonable degree of precision and particularity. It is here where the definiteness of the language employed must be analyzed--not in a vacuum, but always in light of the teachings of the prior art and of the particular application disclosure as it would be interpreted by one possessing the ordinary level of skill in the pertinent art."

*6 Further, the purpose of this section of the statute was stated in In re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970) to be:

   "to provide those who would endeavor, in future enterprise, to approach the area circumscribed by the claims of a patent, with the adequate notice demanded by due process of law, so that they may more readily and accurately determine the boundaries of protection involved and evaluate the possibility of infringement and dominance."

Compliance with this section of the statute is "generally a question of law." Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624, 225 USPQ 634, 641 (Fed.Cir.1985).

 

 

 For one to determine whether a particular copolymer meets the terms of these claims, i.e., infringes these claims, one would need to know, inter alia, if that copolymer in film form possesses an ETS value in the range of 150-400 grams per mil. It is not disputed that the specification of the '698 patent does not disclose how to prepare the sample films used to measure ETS. Thus, resort to the specification of the '698 patent will not aid in determining the scope of the rejected claims. Therefore, the issue becomes whether one of ordinary skill in the art would have known how to prepare sample films from a given copolymer in order to obtain ETS values at the time of the present invention.

 

 

 Phillips raised this ground as a defense in the Du Pont litigation. The district court found that Phillips had not met its burden of proof on this issue by clear and convincing evidence. Specifically, the district court decided that the '698 patent clearly shows that the film samples to be tested are to be prepared by compression molding and that compression molded samples are normally molded within a narrow range of 10-12 mils. This conclusion was based upon the testimony of a Du Pont witness, Dr. John K. Beasley. Du Pont I, 2 USPQ2d at 1567. It appears from the record that Phillips did not appeal this portion of the district court's decision to the Federal Circuit.

 

 

 As set forth above, the examiner has focused upon two aspects of how the ETS test was run on polymer film samples in 1956-57, the manner in which the film samples were prepared and how thick the film samples were. Du Pont does not dispute in the Appeal Brief that the precise ETS value obtained for a given film sample does in fact depend upon the sample preparation method and thickness. [FN7] Rather, Du Pont's position is that the PTO should give deference to the district court's decision on this issue in the litigation and reach the same conclusion.

 

 

 The examiner's position is that the district court's decision was based upon internal Du Pont practices at that time which were not publicized and that the evidence relied upon does not establish that the skilled worker in this art at that time would have necessarily used the same internal Du Pont standards.

 

 

  *7 To the extent that the method of preparing resin film samples for ETS testing is in issue, Dr. Beasley set forth three reasons why the '698 patent teaches the skilled worker that the samples were prepared by compression molding.

 

 

 First, Dr. Beasley observed that the ETS values were reported in single numbers in the patent. This was seen by Dr. Beasley to be indicative of using a compression molded sample since ETS values for extruded film samples are reported for both the machine and transverse directions for extruded films due to the significant orientation such films undergo during extrusion (A1091). Second, Dr. Beasley testified that the examples of the '698 patent point to small scale preparation which would not produce a sufficient quantity of resin to form an extruded film (A1090-91). Third, Dr. Beasley testified that Example 14 of the '698 patent formed a molded film from the resin which he considered to be an indication that molded films were used (A1092). [FN8]

 

 

 As to the first point made by Dr. Beasley, we note that he also testified that it was known at the relevant time to report the ETS value for an extruded film as a single number which represented the average of the separately measured ETS values for the machine and transverse direction of the film (A932). This testimony conflicts with his observation that, since the '698 patent reports the ETS values as a single number, a molded sample, as opposed to an extruded sample, was used. Since it was known in the art at that time that ETS values for an extruded film may be reported as a single number, it is not clear from the '698 patent how the ETS test films were prepared. The single number values reported in the '698 patent may have been obtained from a compression molded sample or represent the average of the values measured in the machine and transverse directions of an extruded film.

 

 

 As to Dr. Beasley's second point concerning the scale of the examples of  the '698 patent being an indication that a small amount of resin was produced which would be insufficient to form an extruded film and that a molded film was produced in one of the examples of the '698 patent, we note that the only examples which report ETS values, Examples 1 through 12, do not set forth on what scale or, regardless of scale, the quantity of interpolymer made. Therefore, it can not be determined from these examples how the test films were prepared or how thick they were.

 

 

 As to Dr. Beasley's third point, we note that the copolymer of Example 13 was produced in sufficient quantity that the product could be extruded into monofilaments and 1-inch pipe. Therefore, the basis of Dr. Beasley's analysis in regard to the scale of the examples of the '698 patent and his conclusion that sufficient resin was not produced in the examples to form an extruded film is not apparent.

 

 

 Since, Dr. Beasley's testimony did not take into account the fact that  the '698 patent does not inform the reader how the relevant samples were formed in Examples 1 through 12 or that sufficient copolymer was formed in certain of the other examples to form extruded or molded products, we find his conclusions on this issue are not entitled to great weight.

 

 

  *8 Relevant to the second issue raised by the examiner, i.e., the '698 patent does not disclose the thickness of the samples used to obtain the ETS values, is Du Pont's awareness that ETS values for resins were dependent upon the thickness of the film sample before the '698 patent was filed as well as during its prosecution. In a report dated February 17, 1956, Du Pont researchers stated (A13814-815):

   Elmendorf tear values for polyethylene resins depend upon the specimen thickness. The effect of the specimen thickness is shown by the smoothed curves given in Figure 3 for data obtained on UM/TD resins.

 

 

* * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * *

 

   The Elmendorf tear value for a polyethylene resin depends upon the time required to complete the tearing of the specimen. The slower the tearing rate (the thicker the specimen) the higher the calculated Elmendorf tear value. Also, the lower the melt index (the tougher the resin) the greater the effect of the specimen thickness on the calculated Elmendorf tear value.

 

 

* * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * *

 

   The Elmendorf tear data reported in Polyethylene Letter No. 56 were obtained on moldings which averaged 11 +- 1 mils in thickness. Since it is desirable to correct the experimental Elmendorf tear values to a standard specimen thickness of 10 mils, we obtained additional data in order to determine the effect of specimen thickness.

 

 

* * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * * *

 

   The marked effect of specimen thickness on Elmendorf tear is shown in Figure 2 for a molding of melt index 1.17.

 

 

 Figure 2 of this report shows ETS values for films having a thickness of 5-22 mils vary from 35-95 grams/mil for the resin tested. In the thickness range of 10-12 mils the values were between 50-60 grams/mil.

 

 

 This record also establishes that the patent section of Du Pont also raised the question of the film thickness used to obtain the claimed Elmendorf values in a letter dated March 29, 1957 (A13902). A handwritten response of unknown origin to this query appears in the record (A13902) which states:

   Elmendorf values are ok for thin films but as they get too thick the value depends on thickness. It is to be assumed that a skilled analyst would use a thin enough film.

 

 

 It should also be noted that while the abandoned parent application of  the '698 patent did disclose the samples used to obtain the results reported in Tables I and II, the only examples where ETS values are reported, were obtained from compression molded samples, the thickness of the samples was not disclosed. In any event, this disclosure was deleted when the continuation-in-part application which issued as the '698 patent was filed. [FN9] Compare A3985 with A4025.

 

 

 From this record, it is clear that the reported ETS values have meaning only if accompanied by disclosure of the method used to prepare the samples and how thick the samples were.

 

 

 In reaching its decision on this issue, the district court found that the  '698 patent indicates that the claimed ETS values were obtained from compression molded samples, that one skilled in the art would have used compression molded samples having a thickness of 10-12 mils, and that this thickness would have very little effect on the ETS values, all from the testimony of Dr. Beasley. However, the testimony of Dr. Beasley relied upon by the district court is either contradicted by other testimony by Dr. Beasley or is not supported by this record. Further, the examiner has raised a point not considered by the district court, i.e., the testimony of Dr. Beasley was based solely upon internal Du Pont practices. Du Pont has not pointed to any evidence in the record which establishes that in 1957, those skilled in this art, viewing the ETS values reported and claimed in the '698 patent, would have been apprised that those values were obtained from compression molded films having a thickness of 10 mils as asserted by Du Pont. Thus, we do not find the decision of the district court in this matter to be controlling.

 

 

  *9 Du Pont was well aware, both before and during prosecution of the  '698 patent, of the ambiguity in these claims which resulted from the failure of the patent to disclose that the reported ETS values were obtained from compression molded films or the thickness of the films. Upon issuance of the '698 patent, those who wanted to determine the metes and bounds of these claims as well as infringement and domination issues, were left in a quandary as to whether copolymers which in all other respects met the terms of the rejected claims did in fact meet the ETS requirement. The evidence of record establishes that for a given resin, the ETS value for films of differing thicknesses will vary to a large degree and that reporting ETS values as a single number was essentially meaningless. It is apparent that at the time the '698 patent was filed, this ambiguity could have been avoided by Du Pont by including in the '698 patent the information which they were in possession of at that time in regard to the precise manner in which the disclosed and claimed ETS values were obtained.

 

 

 We agree with the examiner that claims 1, 11, 33, and 37 are indefinite under 35 USC § 112, second paragraph.

 

 

 Rejection A is affirmed.

 

 

Rejection B

 

 The examiner is of the opinion that the original disclosure of the '698 patent does not provide descriptive support for the limitation of claim 37 that interpolymers of the specified alpha olefins monomers having 5 to 14 carbon atoms have the specified range of ETS values.

 

 

 The question of descriptive support as it arises under 35 USC § 112, first paragraph, is one of fact. In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976).

 

 

 Here, there is no dispute that the '698 patent discloses that interpolymers having alpha olefin monomers of 5 to 10 carbon atoms may have the claimed Elmendorf values and that Example 11 of the patent is evidence that interpolymers of alpha olefins of 14 carbon atoms may also have the claimed values. The examiner's concern is that the '698 patent does not explicitly disclose that interpolymers having alpha olefin monomers of 11, 12, and 13 carbon atoms may have the claimed ETS values.

 

 

 A patent specification need only convey to one of skill in the art, in any manner, that a later added claim limitation was part of applicant's invention. In re Smythe, 480 F.2d 1376, 1382, 178 USPQ 279, 284 (CCPA 1973). The initial burden is on the PTO to establish that the now claimed subject matter is not described by the specification. In re Wertheim, supra, 541 F.2d at 263-64, 191 USPQ at 98. Here, the absence of express support for the questioned language is sufficient basis for the examiner to shift the burden of proof to Du Pont to establish that the original disclosure of the '698 patent conveys the concept now claimed.

 

 

  *10 While the examiner is correct that the '698 patent attributes the claimed ETS values to the interpolymers of alpha olefins having 5-10 carbon atoms, we agree with Du Pont that the additional disclosure of Example 11 of the patent that interpolymers of n-tetradadecene-1 may also have ETS values within the claimed range to be a sufficient basis to reach the conclusion that the '698 patent describes the concept now recited in this claim.

 

 

 Rejection B is reversed.

 

 

Rejection C

 

 This rejection involves the following language used in claims 16 through 20, 23, 24, 27 through 31, 40, and 41 which were newly added in this proceeding:

   "An interpolymer having impact strength or environmental stress crack resistance properties that are superior to those obtained with comparable free-radical polyethelene, linear polyethylene, interpolymers of ethylene and propylene and interpolymers of ethylene and butene...."

 

 

 The examiner considers these claims to be indefinite under 35 USC § 112, second paragraph, to the extent this passage uses the words "comparable" and "superior." We agree.

 

 

 The examiner sets forth on pages 5-6 of the Answer that the '698 patent does not define which properties are to be considered in determining whether two samples are "comparable" or how close the values of the chosen properties must be in order for the samples to be considered "comparable." The examiner has also noted that the '698 patent does not define the term "superior" as it is used in the context of the new claims.

 

 

 Since these terms are not defined in the specification of the '698 patent, the issue is whether one skilled in the art at that time would have been able to reasonably determine their metes and bounds in the context they are used. In re Moore, supra.

 

 

 As to the issue as to what "comparable" means, Du Pont argues (Appeal Brief, pages 58-59) that one skilled in the art makes comparisons between polymer samples having "comparable" densities and melt indices. In making this argument, Du Pont relies upon the testimony of Dr. Beasley (A796) and Phillips' expert John Hogan (A2565-571).

 

 

 Both Dr. Beasley and Mr. Hogan did point to melt index and density as two of the properties of copolymers one would look to in making comparisons. However, the testimony of these witnesses points to a more precise comparison than apparently meant by Du Pont in choosing this word. Dr. Beasley testified in terms of the melt index and density of comparable resins "being the same or being equivalent", not "comparable." The portion of Mr. Hogan's testimony relied upon by Du Pont occurred when Mr. Hogan was cross examined by counsel for Du Pont concerning the proper basis for making such a comparison. In essence, Mr. Hogan was asked whether such a comparison should be made on the basis of the melt index and density being "the same" (A2571).

 

 

 Assuming that melt index and density are the only two properties one of ordinary skill in the art would look to in comparing such interpolymers, the testimony relied upon by Du Pont speaks of comparisons being made between resins or interpolymers having the same or equivalent melt index and density, not "comparable." [FN10]

 

 

  *11 The difficulty in determining the metes and bounds of these claims in regard to the extent this word is used is exemplifed by the comparisons made in the footnote of page 58 of Du Pont's Appeal Brief. The first comparison is between the control example and Example 3 of Table I of the '698 patent. The control example used a conventional branched polyethylene having a melt index of 0.30 and a density of .915. The interpolymer of Example 3 had a melt index of .62 and a density of .9154. The second comparison is between the hexene interpolymer of Example 9a having a melt index of 0.6 and a density of .934 and the unnumbered butene interpolymer of Table II having a melt index 0.5 and a density of .936.

 

 

 While Du Pont argues that these comparisons are between "comparable" interpolymers, there is no explanation on this record why one skilled in this art would consider these resins having the differing values of melt index and density to be "comparable." It is not clear from this record how close the values for melt index and density of copolymers to be compared need be in order for the copolymers to be considered "comparable." If it is intended that comparisons are to be made between resins having the same or equivalent melt index and density as brought out in the testimony of Dr. Beasley and Mr. Hogan, then the claims should use such language. As the claims now read, one is left to surmise and conjecture to determine the specific properties to be compared and how "comparable" their values need be when determining infringement and domination issues.

 

 

 As to the use of the word "superior" in these claims, the '698 patent discloses that the inventive interpolymers have impact strength or environmental stress crack resistance (ESCR) values which may, in some sense of the word, be considered "superior" to the comparative products in that the tables in the '698 patent set forth results which significantly differ. Assuming one was comparing "comparable" products as required by these claims, the issue arises in the absence of any definition in the specification of the '698 patent of the word "superior" as to the meaning and scope of the word. Does it mean any improvement in the listed properties or does it mean an improvement of the significant scope exemplified in the comparisons made in the patent? Du Pont only points to the examples in the '698 patent and has not offered any explanation as to how the word "superior" is to be interpreted in the context in which it is used in these claims.

 

 

 Another example of the difficulty one of skill in this art would have in determining the scope of these claims appears at A5032. Table 9 of this article compares a copolymer of ethylene and butene-1 with a copolymer of ethylene and hexene-1 of equal metal index and density. The bent strip ESCR is reported for both copolymers to be >1000 hr. Does such a tie go to the potential infringer or the patentee? Must this test be run to obtain a definitive value? [FN11]

 

 

  *12 Rejection C is affirmed.

 

 

Rejection D

 

 The examiner has also concluded that the preamble of claims 16 through 20, 23, 24, 27 through 31, 40, and 41 was not described in the original disclosure of the '698 patent as required by 35 USC § 112, first paragraph.

 

 

 There is no dispute that the questioned language does not explicitly appear in the original disclosure of the '698 patent. As recognized previously, this does not end the inquiry. Rather, Du Pont points to various passages in the '698 patent, arguing that these passages provide the requisite written support.

 

 

 We have reviewed the original disclosure of the '698 patent in light of the arguments set forth on pages 55-61 of Du Pont's Appeal Brief, but agree with the examiner that the questioned language of these claims was not described in the '698 patent's original disclosure.

 

 

 In comparing the impact strength and ESCR properties of the inventive interpolymers with the polymers and copolymers of the prior art, the '698 patent discloses that the inventive interpolymers possess impact toughness higher than or ESCR values at least equal to any other polyethylene or injection moldable resin "ever tested." See column 2, lines 1-48. Propylene is disclosed to be not effective in imparting "outstanding" impact strength and ESCR values and butene is disclosed to be only "marginal" in this respect. See column 3, lines 15-37. "Conventional" higher density branched and linear polyethylenes are disclosed at column 4, lines 17-34 to be too poor in impact strength for certain applications while certain of the inventive interpolymers are stated to possess impact toughness "heretofore unobtainable in polyethylene resins", with the butene copolymers again being "marginal" in this respect.

 

 

 Tables I-VIII of the '698 patent compare certain of the inventive interpolymers with various polyethylenes and ethylene-propylene/butylene copolymers in terms of impact strength and ESCR. The reported results show the inventive interpolymers to have increased impact strength and ESCR vis-a-vis the comparative resins.

 

 

 Reading the '698 patent in its entirety, it is apparent that it does disclose that certain of the inventive interpolymers have better/improved/superior impact strength and ESCR properties than certain of the polyethylene resins and ethylene-propylene/butylene copolymers with which they were compared. We disagree with Du Pont, however, that this provides the requisite written descriptive support for the precise language used in the rejected claims which has been questioned by the examiner.

 

 

 The comparisons made in the '698 patent, both descriptively and in the tables, are between inventive interpolymers and either "commercial resins" or resins which had been "ever tested" at that time, or between interpolymers and resins or copolymers which had differing melt indices and/or densities. It is not apparent that any of these comparisons are between "comparable" products as this term is used in these claims. We do not find that the original disclosure of the '698 patent conveys the concept now claimed to one of skill in the art.

 

 

  *13 Rejection D is affirmed.

 

 

PRIOR ART REJECTIONS

 

PRELIMINARY ISSUE

 

 We have determined that the recitation of ETS values in claims 1, 11, 33, and 37, as well as the recitation of "comparable" and "superior" in claims 16 through 20, 23, 24, 27 through 31, 40, and 41, renders these claims indefinite under 35 USC § 112, second paragraph. We are aware that this conclusion raises the question of the propriety of applying prior art to these claims since their metes and bounds can not be reasonably determined. In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962). However, in view of the circumstances surrounding this merged proceeding and the litigation which has occured, we will proceed to decide the prior art issues as they have been presented on this record in the interest of administrative economy.

 

 

REJECTIONS UNDER 35 USC § 102

 

Rejection E

 

 As set forth above, Du Pont has admitted that Witt and Leatherman made copolymers of ethylene with pentene or hexene at a date earlier than that of the present invention. These copolymers had melt index, density, comonomer weight percent, and percent crystallinity values within the ranges of these parameters set forth in claims of the '698 patent asserted against Phillips in the litigation.

 

 

 The claims remaining in this proceeding recite either numerical or functional values for certain properties which Witt and Leatherman did not measure for the copolymers they made in 1955. Thus, the issue to be resolved in this rejection is whether the Witt and Leatherman copolymers possessed the additional properties recited in these claims.

 

 

 As set forth by the court in In re Best, 562 F.2d 125: 195 USPQ 430 (CCPA 1977):

   Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.... Whether the rejection is based on 'inherency' under 35 USC 102, on 'prima facie obviousness' under 35 USC 103 jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products [footnote omitted].

As apparent from the court's statement, this doctrine is applicable to product claims as well as product-by-process claims. In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). Thus, the burden on Du Pont is to distinguish the claimed interpolymers from the Witt and Leatherman copolymers. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed.Cir.1990). As explained in Spada:

    *14 Spada's position is that his polymers are not anticipated by the polymers of [the reference] because their properties are different, Spada was reasonably required to show that his polymer compositions are different from those described by [the reference]. This burden was not met by simply including the assertedly different properties in the claims. When the claimed compositions are not novel they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in the prior art.

However, the court was aware of the relevant facts of this case when deciding Spada, having previously decided the appeal in the Phillips litigation (Du Pont II). The court stated:

   The Board suggested that Spada provide some scientific explanation of the asserted differences between the properties of his compositions and those described by [the reference]. While an inventor is not required to understand how or why an invention works, we think that the PTO was correct, in view of the apparent identity of the compositions, in requiring Spada to distinguish his compositions from those of [the reference]. Although newly discovered properties can be the basis of claims to novel polymers, E.I. DuPont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1435, 7 USPQ2d 1129, 1133 (Fed.Cir.), cert. denied. 109 S.Ct. 542 (1988), Spada did not overcome, with argument or evidence, the apparent chemical identity of his polymers and those of [the reference] Spada showed no error, in science or in law, in the Board's holding that the products appeared to be the same and thus that Spada's products were not new. [footnote omitted]

 

 

 Du Pont assigns four errors to this rejection (Appeal Brief, pages 63-64). The first is that the examiner improperly placed the burden on Du Pont in that the burden should be on the examiner to establish that the Witt and Leatherman copolymers inherently possessed the now claimed properties. We are not persuaded by this argument. On the facts of this case, the burden is reasonably shifted from the examiner. In re Spada, supra; In re Fitzgerald, supra; In re Best, supra.

 

 

 Du Pont raises as the second error that if the burden is shifted from the examiner, as between Du Pont and Phillips, Phillips is in the best position to establish whether the copolymers of Witt and Leatherman did possess the now claimed properties since Witt and Leatherman were Phillips employees and Phillips is an active protestor in these proceedings. Du Pont argues that it is "impossible" to replicate the Witt and Leatherman copolymers (Appeal Brief, page 71) and that the Witt and Leatherman work is "nonenabling" (Reply Brief, pages 14-15). In support, Du Pont relies upon the Phillips attempt to reproduce the Witt and Leatherman copolymers during the ongoing litigation which has been made of record in this proceeding.

 

 

 In resolving this issue the precise burden Du Pont is under must be kept in mind. Du Pont has admitted that the prior art includes copolymers of ethylene and hexene having comonomer-type, density, percent crystallinity and weight percent comonomer within claim 1 which had melt indices of 0.19 and 0.27 and copolymers of ethylene and pentene having values for these parameters and properties within claim 1. This admission was based upon the copolymers produced by Witt and Leatherman, the properties of which are set forth at A14426-434. However, the properties reported for these copolymers include not only those which are in common with those recited in the rejected claims, but also other properties not recited in these claims, e.g., melting point, softening point, impact strength, flexural rigidity, etc. Thus, the Witt and Leatherman copolymers are "fingerprinted" to a greater extent than the claimed copolymers. Du Pont's burden is to produce copolymers which have the same fingerprint as those produced by Witt and Leatherman and perform further tests to determine if such polymers meet the ETS and superior properties requirements of these claims.

 

 

  *15 Du Pont's arguments concerning shifting the burden to reproduce the Witt and Leatherman copolymers to Phillips because it is in a peculiar position to know the facts of how to make the Witt and Leatherman copolymers are not persuasive. This record contains not only the abandoned Witt and Leatherman patent application in which these copolymers were disclosed but the relevant laboratory notebooks kept by these researchers when performing the experiments. To the extent that one method of producing the copolymers made by Witt and Leatherman is through use of the Phillips' catalytic process, Du Pont has not established why the information available on this record is so deficient that it should be excused from even attempting to make the prior art products. Arguments such as those at page 71 of the Appeal Brief concerning the precise pressure used in the Phillips process in 1955 do not take into account that it is a product that is to be duplicated, not a process. Granting that the process by which a polymer is made will play a role in the properties of the polymer produced, this record fingerprints the prior art product to such a degree that it can be reasonably determined whether the product formed by following a particular set of process conditions is a reproduction of a given prior art product.

 

 

 There is ample precedent for shifting the burden to an applicant to reproduce a prior art product whose final structure or properties are, at least, in part determined by the precise process used in its manufacture. In re Spada, supra, (polymer with the relevant property being glass transition temperature); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980) (polymer with the relevant property being crystallization shrinkage); In re Best, supra, (zeolite with the relevant properties including X-ray diffraction pattern); In re Fessmann, 489 F.2d 742, 180 USPQ 324 (CCPA 1974), (liquid smoke product with the relevant property being a low content of carcinogen); In re Brown, 450 F.2d 531, 173 USPQ 685 (CCPA 1972), (catalysts with the relevant parameter being catalyst activity/selectivity).

 

 

 Du Pont's burden under the facts of record in this proceeding is not seen to be significantly more difficult than the burden imposed upon the appellants in the above referenced cases. Again noting that the subject matter on appeal is directed to a product, it is not apparent from this record that a copolymer having all of the properties identified by Witt and Leatherman could not be produced by using the coordination catalysts used in the '698 patent or the other prior art references of record. Nor is it apparent from this record that a copolymer identified to the same degree as the Witt and Leatherman copolymers produced via a catalytic process using a coordination catalyst would differ in any significant manner from a copolymer identified to the same degree made from the Phillips' catalytic process. Thus, we do not find that this record establishes that Phillips is in an unique position to reproduce the Witt and Leatherman copolymers as argued by Du Pont. If in attempting to meet this burden, Du Pont finds it easier to use other technology including that with which it is more familiar, i.e., coordination catalyst technology, such other technology could be used to obtain prior art copolymers having the fingerprint identified by Witt and Leatherman.

 

 

  *16 Turning to Phillips' attempts to reproduce the Witt and Leatherman copolymers, we agree with the examiner and Du Pont that the work made of record does not establish that the prior art copolymers possessed the claimed properties since the reported work does not identify the reproduction copolymers to the same degree as the prior art copolymers. The affidavits of the Phillips employees which set forth this work only identify the copolymers by monomer content, melt index, density, and Elmendorf value. However, while the Phillips' reproduction work may not establish that the Witt and Leatherman copolymers possessed the requisite properties, the work is not without value since it does show that copolymers which share at least some common properties with the prior art copolymers do have ETS values within the claimed range. While this record may not establish that the prior art copolymers anticipate the rejected claims, the record does not establish the contrary. It remains an unanswered question. However, under the precedent cited above, it is Du Pont's burden to prove they do not.

 

 

 The third and fourth points made by Du Pont concern the examiner's statements that the Witt and Leatherman copolymers "inherently" had or the reasonable probability that they had the claimed ETS values and superior properties. Du Pont discusses (Appeal Brief, pages 75-81) certain of the affidavits submitted on behalf of itself and Phillips which discuss whether the original Witt and Leatherman copolymers or their purported reproductions did have or could have the requisite ETS values and superior properties.

 

 

 In considering these arguments and evidence, we find that they are entitled to little weight in view of this record. The best evidence as to whether the Witt and Leatherman copolymers do anticipate the rejected claims is to reproduce them and measure the properties in question. Instead, both Du Pont and Phillips rely upon mathematical models and analysis of the various copolymers. Such indirect evidence is entitled to little, if any, weight until it is established that the best evidence, a direct comparison, is truly "impossible" to obtain.

 

 

 To the extent this issue was considered by the district court in the Phillips' litigation in regard to claim 1, it is clear that the district court's decision on remand was based upon the failure of Philips to sustain its burden of proof in that proceeding. Since the burden is on Du Pont, not Phillips, in this proceeding, the conclusion of the district court is not relevant.

 

 

 Since Du Pont has not met its burden to reproduce the copolymers it has admitted to be prior art, the issues raised in Steele concerning the propriety of applying prior art to indefinite claims are not reached.

 

 

 Rejection E is affirmed.

 

 

Rejection J

 

 Brown discloses polymerizing ethylene in the presence of tertiary-butyl ethylene, an alpha olefin within the claims on appeal. The tertiary-butyl ethylene is present in an amount of 1.0-25% by weight, based on the ethylene during the polymerization. Brown also discloses at column 2, lines 19-37, that the decrease in density in the polymer which results when the higher amounts of tertiary-butyl ethylene is used indicates that a copolymer of tertiary-butyl ethylene with ethylene is formed. See also column 3, line 64-column 4, line 18 and claims 6 and 7 of Brown for other positive statements that such a copolymer is formed and that the copolymers have a density less than .9300.

 

 

  *17 We agree with the examiner that Brown establishes a prima facie case of anticipation. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed.Cir.1986). The burden is properly shifted to Du Pont to establish through evidence that copolymers are not formed by following the teachings in Brown or, if such evidence establishes that copolymers are formed as disclosed by Brown, that such copolymers do not meet the terms of the rejected claims.

 

 

 As set forth in In re Donohue, 632 F.2d 123, 207 USPQ 196 (CCPA 1980), the statements of copolymer formation in Brown "must be taken at face value in the absence of evidence or reasoning inconsistent therewith." Du Pont relies upon the so-called Dale report (A6918-55), an internal report of the assignee of Brown, which describes the work underlying the reference, arguing that the Dale report "confirms that it is not at all clear" that a copolymer was formed (Appeal brief, pages 114-116).

 

 

 We have carefully considered the Dale report but do not find that it is a sufficient rebuttal of the prima facie case of anticipation. In relevant part, the report indicates that t-butyl groups were not confirmed to be present in the polymerization products by infrared examination but that the observed decrease in polymer density when higher amounts of tertiary-butyl ethylene were used was "a strong indication that some copolymerization did occur" (A6935). Rather than find this report to be inconsistent with Brown, we find that it is entirely consistent with the positive statements contained in the reference that copolymers are formed when higher amounts of tertiary-butyl ethylene are present. The fact that t-butyl groups could not be detected using the infrared testing equipment available at that time does not outweigh the positive statements in the reference, corroborated by the report, that copolymers were formed.

 

 

 In rejecting Phillips' reliance upon Brown as a defense in the litigation, the district court found that Phillips had failed to meet its burden in that proceeding of proving that any copolymer that "might" be formed in Brown possessed the so-called superior properties, Du Pont I, 2 USPQ2d at 1556-57. As stated above, the burden is on Du Pont in this proceeding to provide adequate evidence in rebuttal of the prima facie case of anticipation. This, Du Pont has not done.

 

 

 Rejection J is affirmed.

 

 

REJECTIONS UNDER 35 USC § 103

 

PRIMA FACIE CASES

 

 We have first considered the rejections under 35 USC § 103 to determine if the evidence of obviousness relied upon by the examiner in each rejection is sufficient to support a prima facie conclusion of obviousness. For if it is concluded for any specific rejection that the examiner's evidence is lacking, there would be no need to consider and evaluate Du Pont's countervailing evidence of nonobviousness in order to reach the ultimate conclusion of obviousness/nonobviousness. In re Piasecki, 745 F.2d 1468, 223 USPQ 785 (Fed.Cir.1984). In considering the issue of obviousness raised in each rejection, we find that the level of ordinary skill in this art is adequately represented by the disclosures of the various references relied upon in the rejections.

Rejection F

 

  *18 The claims included in this rejection are either directed to specific interpolymers having alpha olefin monomers other than the hexene and pentence monomers of Witt and Leatherman (claims 3, 4, 6, 8, 9, 16 through 18, 23, 40, and 41) or to specific articles made from the interpolymers (claims 12, 13, and 15).

 

 

 The secondary references relied upon by the examiner in this rejection disclose that interpolymers of ethylene with alpha olefins within these claims other than pentene and hexene were known in the prior art at the time of the present invention. See Vandenberg '963, column 4, line 45-column 5, line 7; Hogan, column 2, lines 6-13 and 45-59, column 9, lines 55-65; and Anderson ' 645, column 4, lines 3-10. Anderson '645 also discloses at column 8, lines 12- 19 that these copolymers were known to be useful in forming molded or extruded articles as well as insulation on conductive wires. See also Hogan at column 3, lines 1-17 for these utilities as well as other utilities such as forming pipe or tubing.

 

 

 In view of the secondary references disclosing alpha olefin monomers having five or more carbon atoms which are included in the rejected claims as comonomers with ethylene as alternatives to the pentene and hexene comonomers of the Witt and Leatherman copolymers, we agree with the examiner that one of ordinary skill in the art would have found in prima facie obvious to form interpolymers of ethylene with other higher alpha olefins beyond the pentene and hexene of Witt and Leatherman with the expectation that the resulting copolymers would have properties suitable for the utilities disclosed by the secondary references.

 

 

 Du Pont argues in the paragraph bridging pages 82-83 of the Appeal Brief that the specific higher olefins recited in claims 3, 4, 6, 8, and 9 are not suggested by the prior art. However, Vandenberg '963 specifically discloses dodecene-1 (claim 3), decene-1 (claims 4 and 8), heptene-1 (claim 6), and octene-1 (claim 9) as monomers to be polymerized with ethylene. Hogan and Anderson '645 each contain a more generic disclosure of these comonomers. Thus, the applied prior art clearly would have led one to form interpolymers of ethylene with these higher alpha olefins.

 

 

 It is argued that the secondary references do not suggest modifying the Witt and Leatherman copolymers to achieve the superior properties claimed in claims 16 through 18, 23, 40, and 41 (Appeal Brief, pages 83-90). However, as recently reiterated by our reviewing court, it is not necessary that the prior art contain a suggestion or the expectation that the claimed compounds have the newly-discovered property. In re Dillon, 919 F.2d 688, 692-93, 16 USPQ2d 1897, 1901 (Fed.Cir.1990). As in Dillon, the applied prior art suggests the claimed compounds with the expectation that they would have properties similar to those of the Witt and Leatherman copolymers. Whether the claimed interpolymers have properties which are unexpectedly beyond those possessed by the copolymers disclosed or suggested by the applied prior art is a question of evidence which will be considered infra.

 

 

Rejection G

 

  *19 The examiner has set forth the prima facie case for this rejection on pages 16 through 20 of his Answer. In view of this thorough and detailed explanation with which we are in agreement, we adopt this portion of the examiner's position as our own [FN12] and add the following comments for emphasis.

 

 

 Attention has been focused in this proceeding on the ethylene-octene copolymer of Example 53 of Vandenberg '963 as the only working example of an ethylene higher alpha olefin copolymer. Du Pont argues that the RSV value reported for this copolymer establishes that it is not melt processable and thus would not be useful in applications which require melt processing. However, such arguments lose sight of the full disclosure of Vandenberg '963 and the secondary references.

 

 

 As seen from column 1, lines 37-55 and column 5, lines 23-25 and 60-66 of Vandenberg '963, the invention of the reference revolves around the ability to control the molecular weight of the disclosed polymers and copolymers. Vandenberg '690 is an improvement on Vandenberg '963. See column 1, lines 48-55 of Vandenberg '690. Vandenberg '690. Vandenberg '690 discloses at column 2, lines 3-9 that the molecular weight (melt processability or melt index) of the polymers and copolymers of Vandenberg '963 may be easily controlled through the use of hydrogen in the polymerization process for the purpose of forming copolymers useful in plastic molding applications. See also column 4, line 67- column 5, line 46 of Vandenberg '690. The remaining secondary references provide further evidence that one of ordinary skill in the art at the time of the present invention was able to control the molecular weight of the copolymers disclosed in Vandenberg '963 in order to make them melt processable, i.e., tailor the melt index to a value particularly suited for a given end application.

 

 

 Du Pont argues that the references do not disclose the numerical or functional strength limitations of the claims. However, the references relied upon by the examiner in this rejection clearly suggest that copolymers of ethylene and higher alpha olefins are useful in the same utilities as the present interpolymers. This is a sufficient basis to conclude that the prior art copolymers had adequate strength for these utilities. Whether the claimed interpolymers possess properties which unexpectedly differ from those of the prior art copolymers is a question of proof. As a prima facie matter, the prior art relied upon in this rejection provides a sufficient basis to shift the burden of proof to Du Pont to go forward with objective evidence of nonobviousness to prove that the claimed interpolymers do in fact possess the argued superior properties.

 

 

 Du Pont makes much of the fact that after Vandenberg made the high molecular weight copolymer of Example 53 of Vandenberg '963, he did not put into effect the teachings of Vandenberg '690 and the other secondary references and rerun the example to make a lower molecular weight copolymer. Du Pont relies upon the trial testimony of Vandenberg in which he described other work he performed using octene-1 as a solvent, arguing that Vandenberg himself did not combine his inventions in the manner proposed by the examiner.

 

 

  *20 By now it is well settled that it is the skill of the hypothetical person of skill in the art that must be taken into account in an obviousness determination under 35 USC 103, not that of the actual inventor. As explained in Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 454, 227 USPQ 293, 297 (Fed.Cir.1985):

   The issue of obviousness is determined entirely with reference to a hypothetical "person having ordinary skill in the art." It is only that hypothetical person who is presumed to be aware of all the pertinent prior art. The actual inventor's skill is irrelevant to the inquiry, and this is for a very important reason. The statutory emphasis is on a person of ordinary skill. Inventors, as a class, according to the concepts underlying the Constitution and the statutes that have created the patent system, possess something--call it what you will--which sets them apart from the workers of ordinary skill, and one should not go about determining obviousness under § 103 by inquiring into what patentees (i.e., inventors) would have known or would likely have done, faced with the revelations of references. A person of ordinary skill in the art is also presumed to be one who thinks along the line of conventional wisdom in the art and is not one who undertakes to innovate, whether by patient, and often expensive, systematic research or by extraordinary insights, it makes no difference which.

 

 

 Thus, we do not find the testimony of Mr. Vandenberg to have much relevance to this issue since Mr. Vandenberg did not testify in regard to what would have been obvious at this point in time to a hypothetical person of ordinary skill in the art. The more compelling evidence on this issue is the express disclosures of the two Vandenberg references. Vandenberg '690 clearly teaches that, to the extent the copolymers of Vandenberg '963 may have too high a molecular weight to be useful in plastic molding applications, the polymerization process may be modified to tailor the molecular weight to a desired value.

 

 

 Further, the examiner has also relied upon Anderson '917 in this rejection which provides very relevant evidence to this issue. Anderson '917 discloses that polymers of ethylene and copolymers of ethylene with other ethylenically unsaturated monomers, which constitutes a generic description of the present higher alpha olefin comonomers, may have their "toughness" properties optimized by conducting the polymerization under certain temperature conditions while maintaining the monomer and formed polymer/copolymer in solution. In this manner, the reference teaches that the melt index and molecular weight distribution may be controlled in an advantageous manner. [FN13]

 

 

Rejection H

 Anderson '645 discloses copolymers of ethylene and ethylenically unsaturated monomers broadly which are formed using coordination catalysts. The products of Anderson '645 are stated to be useful in forming molded articles and wire insulation (column 8, lines 12-15).

 

 

  *21 Natta discloses that ethylene may be copolymerized with such ethylenically unsaturated monomers as pentene-1 and hexene-1 using coordination catalysts (column 6, lines 63-67). Haven discloses that branched monoolefin monomers containing 5 to 9 carbon atoms may be polymerized using coordination catalysts (column 1, lines 33-38). The polymers of this reference are stated to be useful in forming shaped articles.

 

 

 We agree with the examiner's conclusion that one of ordinary skill in the art would have found it prima facie obvious to form copolymers of ethylene with alpha olefins such as hexene and pentene using coordination catalysts. Such copolymers would expectedly have strength values and other properties which would make them suitable for use in the utilities disclosed in these references. Again, whether the claimed interpolymers possess unexpectedly superior properties when compared with the prior art copolymers is a question of proof. These references provide a sufficient basis to reach a prima facie conclusion of obviousness.

 

 

 Du Pont argues that Anderson '645 does not contain working examples of copolymers of ethylene and alpha olefins. However, it is well settled that the entire disclosure of a reference must be considered under 35 USC § 103, not just the working examples. In re Mills, 470 F.2d 649, 176 USPQ 196 (CCPA 1972). Anderson '645 generically describes the present interpolymers with the secondary references providing more specific guidance to form copolymers of ethylene with alpha olefins having five or more carbon atoms.

 

 

Rejection I

 

 Nowlin describes copolymers of ethylene and alpha olefins having at least 5 carbon atoms, e.g., 1-hexene and 1-octene (column 4, lines 34-64), which are useful in forming molded bottles or extruded pipe (column 9, lines 46-51). Much of the consideration this reference has received in this proceeding centers around Example II which sets forth the preparation of a copolymer of ethylene and 1-hexene which was compression molded. Both Du Pont and the examiner agree that the melt index of the copolymer of this example is 0.057. Du Pont argues that this value means that the copolymer is a no flow copolymer and that this, coupled with the fact that Nowlin and his co-inventor did not actually produce a copolymer having a melt index within the claimed range per the knowledge of the secondary references, is sufficient to dispose of the reference.

 

 

 We first point out again that a reference must be considered in its entirety. In re Mills, supra. The fact that the specific copolymer of Example II had a melt index outside the claimed range has little meaning when the entire disclosure of the reference is considered. Since this rejection is under 35 USC § 103, not 35 USC § 102, the skill of the hypothetical ordinary person in this art must be taken into account. Nowlin broadly discloses copolymers of ethylene and higher alpha olefins which are capable of being molded and extruded. Thus, even apart from the secondary references relied upon in this rejection, Nowlin itself provides evidence that the hypothetical person of ordinary skill was aware of copolymers of ethylene and alpha olefins having five or more carbon atoms having a melt index appropriate for molding and extruding utilities.

 

 

  *22 We also point out that Du Pont's characterization of the copolymer of Example II as being no flow is contradicted by evidence of record. Du Pont has admitted that, at the time of the present invention, polyethylenes having a melt index as low as 0.05 had been extruded (A9074). Other Du Pont references of record also contradict this characterization. Compare Brebner '917 (commercial polyethylenes have a melt index in the range of 0.2-10) with Brebner '357 (practical melt index for polyethylene being 0.01-10). Thus, to the extent that Example II of Nowlin highlights or draws attention to copolymers of ethylene and hexene out of the various copolymers disclosed in that reference and the copolymer of this example has a melt index value outside of that claimed, one of ordinary skill in the art would have found it obvious to form such copolymers having a melt index in the range found to be commercially useful as in the present claims using the prior art taught techniques.

 

 

 Du Pont points out that Example I of Nowlin discloses a polyethylene of low melt index while Example III of the reference discloses that modifying the melt index of polyethylene to obtain improved flow properties decreased the strength of the polymer. These examples are argued to mitigate against raising the melt index in the manner suggested by the secondary references. We disagree.

 

 

 It is clear that the person of ordinary skill in the art was well aware of the concept of raising the melt index of these polymers and copolymers using the prior art techniques exemplified in the secondary references as well as the effect varying the melt index and molecular weight distribution would have on the various strengths of the product. See, e.g., Anderson '917. To the extent that references such as Nowlin and Anderson '917 are evidence of the relationship that melt index and molecular weight distribution have with the resulting strength of a copolymer of ethylene and higher alpha olefins, it can be concluded that these properties are result effective variables. Therefore, one of ordinary skill in the would have routinely optimized these values. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).

 

 

 Du Pont argues that the district court "rejected" this rejection (Appeal Brief, pages 112-113). However, as apparent from the portion of the district court's decision relied upon, the court's consideration of this issue revolved around the skill of the actual inventors and not that of the hypothetical person. Further, the district court apparently did not have all of the references relied upon by the examiner in this rejection, e.g., Anderson '917, before it. Nowlin and the secondary references relied upon in this rejection provide an adequate basis to conclude that one of ordinary skill in the art would have found it prima facie obvious to form copolymers of ethylene and alpha olefins having five or more carbon atoms having appropriate melt index and strength values for the disclosed molding and extruding utilities. Whether the claimed copolymers possess unexpected properties over those disclosed or suggested in this prior art is a matter of proof.

 

 

Rejection K

 

  *23 Claims 12, 13, 15, and 26 are directed to various products or uses of the claimed interpolymers. Du Pont does not argues that the claimed utilities would not have been obvious uses for the copolymers formed by Brown. Rather, Du Pont argues that the reference does not disclose the superior properties of the claimed polymers. As explained above, it is Du Pont's burden in this proceeding to establish through objective evidence that the claimed subject matter differs from the copolymers of Brown in a nonobvious manner. Du Pont has not relied upon any such evidence in traversing this rejection.

 

 

 Rejection K is affirmed.

 

 

EVIDENCE OF NONOBVIOUSNESS

 

 In rebuttal of the prima facie cases of obviousness established by the examiner, Du Pont urges that certain evidence of record establishes that the claimed invention possesses such indicia of nonobviousness as unexpectedly superior results, commercial success and copying by others.

 

 

 Presentation and reliance upon evidence of secondary considerations or objective evidence of nonobviousness does not mandate a conclusion of nonobviousness. Newell Companies v. Kenney Manufacturing Co. 864 F.2d 757, 768, 9 USPQ2d 1417, 1426 (Fed.Cir.1988). Rather, the evidence of obviousness upon which a prima facie conclusion of obviousness is based must be weighed against the rebuttal evidence of nonobviousness and a final conclusion of patentability under 35 USC § 103 must be reached. In re Eli Lilly & Co., 902 F.2d 943, 14 USPQ2d 1741 (Fed.Cir.1990); In re Piasecki, supra.

 

 

 In evaluating and assigning weight to the evidence of nonobviousness several factors must be kept in mind. The evidence must represent a comparison with the closest prior art. In re Malagari, 499 F.2d 1297, 182 USPQ 549 (CCPA 1974). Merely showing a difference in properties between the prior art and claimed copolymers is not enough. Any difference shown must be such that it would be considered unexpected by one of ordinary skill in the art. In re Merck & Co. Inc., 800 F.2d 1091, 231 USPQ 375 (Fed.Cir.1986); In re Freeman, 474 F.2d 1318, 177 USPQ 139 (CCPA 1973). The proffered evidence must be commensurate in scope with the claims, In re Lindner, 457 F.2d 506, 173 USPQ 356 (CCPA 1972), including evidence of commercial success, In re Tiffin, 443 F.2d 394, 170 USPQ 88 (CCPA 1971).

 

 

 We note that "Commercial success is relevant only if it flows from the merits of the claimed invention." Sjolund v. Musland, 847 F.2d 1573, 1582, 6 USPQ2d 2020, 2028 (Fed.Cir.1988) (emphasis in original), i.e., there must be a nexus between the claimed invention and the commercial activity relied upon. The evidence is of little relevance if it only reflects improvement on what is disclosed in a patent, In re Vamco Machine & Tool Co., 752 F.2d 1564, 1577 n. 5, 224 USPQ 617, 625, n. 5 (Fed.Cir.1985), or is due to "other economic and commercial factors unrelated to the technical quality of the patented subject matter", Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1027, 226 USPQ 881, 888 (Fed.Cir.1985). Further, merely specifying sales figures alone is not sufficient to establish commercial success. Other evidence such as market share, growth in market share, replacement of earlier products sold by others, etc. need be present. Kansas Jack, Inc. v. Kuhn, 719 F.2d 1144, 1151, 219 USPQ 857, 861 (Fed.Cir.1983).

 

 

  *24 While it is apparent that the ultimate assessment of this evidence will have to be made on a claim by claim basis for each rejection under 35 USC § 103, we make the following general conclusions in regard to the evidence of nonobviousness as the arguments and evidence are discussed in the briefs.

 

 

UNEXPECTEDLY SUPERIOR RESULTS

 

 As apparent from the above discussion of the prima facie cases, Du Pont has repeatedly asserted that the claimed interpolymers possess strength properties superior to those of certain prior art polymers and copolymers. The evidence in support of these arguments includes the working examples of the '698 patent, certain of the experimental data generated by Du Pont during the development of the claimed invention which was introduced into the trial record and alleged acknowledgements from various competitors in regard to the strength characteristics of these copolymers. In essence, Du Pont has relied upon the finding of the district court that the interpolymers of the claims involved in the litigation did possess these allegedly superior properties, this finding being supported by the trial record citations set forth in footnote 16 of the original district court opinion, Du Pont I, 2 USPQ2d at 1562. [FN14]

 

 

 To the extent that these arguments are based upon measured strength values of copolymers within and without the claims of the '698 patent, the most complete compendium of such data appears to be certain trial exhibits submitted by Phillips (A14481-93 for ETS and A14503-18 for ESCR) which were compiled from various internal Du Pont reports prepared at or about the time the present invention was developed. The exhibits include data obtained from interpolymers of ethylene and alpha olefins having five or more carbon atoms as well as interpolymers of ethylene and propylene or butene.

 

 

 As apparent from the ETS data, copolymers of ethylene and propylene or butene, as well as copolymers of ethylene and alpha olefins having five or more carbon atoms, having melt index and density values within those claimed may have ETS values within and without the range of 150-400 grams per mil set forth in claims 1, 11, 33, and 37. This comports with the arguments of Du Pont that copolymers having the claimed density and melt index will not necessarily have an ETS value within this range.

 

 

 The ESCR data is similar, i.e., copolymers of ethylene and propylene or butene, as well as copolymers of ethylene and alpha olefins having five or more carbon atoms, having melt index and density values within those claimed may have stress crack values above and below the 1,000 hour standard for unnotched specimens set forth in certain of the claims on appeal.

 

 

 While Du Pont has argued and introduced claims in this proceeding which state that the interpolymers of the '698 patent possess superior impact strength or environmental stress crack resistance when compared with comparable free-radical polyethylenes, linear polyethylenes, interpolymers of ethylene and propylene or butene, Du Pont has not specifically pointed out where in the plethora of data submitted in this proceeding, including the above mentioned exhibits and examples of the '698 patent, there is such a direct comparison of so-called comparable polymers and copolymers on which this conclusion is based. Neither the working examples of the '698 patent or the ETS and ESCR data set forth in the exhibits have been shown to provide such a comparison.

 

 

  *25 Further, in considering Du Pont's arguments and evidence in regard to the properties of the claimed interpolymers, the disclosure of Anderson '917 should be considered so that these arguments can be considered in the context of the prior art.

 

 

 Anderson '917 is a Du Pont patent which is prior art to the '698 patent under 35 USC § 102(e) and has been used in certain of the pending rejections under 35 USC § 103. This reference discusses the importance of controlling the polymerization of ethylene with alpha olefins broadly (column 10, 27-39) when using coordination catalysts in order to control the melt index of the resulting product (column 2, lines 47-62). It is disclosed that the "toughness" of these products as reflected in the ETS and Izod values is increased if for a given melt flow (melt index), the molecular weight distribution is narrowed (column 1, line 64-column 2, line 29; column 5, line 36-61). The control of the melt index and molecular weight distribution of the copolymers in Anderson '917 is achieved through temperature control of the polymerization process (column 3, line 49-65) and by maintaining both the polymer and monomer in solution (column 4, line 16-column 5, line 35).

 

 

 It is apparent from the disclosure of the '698 patent that the present interpolymers are produced using the same concepts disclosed in Anderson '917 of temperature control and maintaining both the polymer and monomer in solution during the polymerization process in order to control the melt index and molecular weight distribution. See the '698 patent, column 2, lines 48-55 ("The advantages of the polymers of this invention are realized most fully when the polymerization is carried out at a high enough temperature to dissolve the polymer ..."); column 9, lines 10-15 ("An advantage in using the solution process, rather than the low temperature process, is the narrower distribution of molecular weight products obtained in the solution process.").

 

 

 Keeping in mind that the prior art relied upon in each rejection under 35 USC § 103 specifically discloses copolymers of ethylene with alpha olefins having five or more carbon atoms, one of ordinary skill in the art would have expected these prior art copolymers to have optimal "toughness" properties, e.g., ETS and stress crack resistance, if polymerized in accordance with the procedures of Anderson '917. Du Pont has argued throughout this proceeding that it is important to properly polymerize the monomers in the present invention in order to achieve the so-called superior properties. See, e.g., Appeal Brief, pages 14-16. [FN15] Since a proper polymerization according to the '698 patent involves following the concepts disclosed in Anderson '917, the obtention of the specific strength values in the present interpolymers is not unexpected.

 

 

 We also find Du Pont's reliance upon the computer generated curves as evidence of the superior properties of the claimed interpolymers at pages 22-24 of the Reply Brief to be misplaced. As set forth above in our discussion of the description issue of the claims added in this proceeding, the accuracy of the plots is questionable. Further, Du Pont has not explained the relevancy of these plots in view of the specific rejections maintained in this appeal, again keeping in mind that the prior art does disclose copolymers of ethylene with alpha olefins having five or more carbon atoms. While the district court viewed these plots as establishing a "trend", Du Pont I, 2 USPQ2d at 1562, we find that any such trend is rebutted by references such as Anderson '917 and Ishikawa which teach that copolymers of ethylene with butene can have very acceptable strength properties if properly polymerized. [FN16]

 

 

  *26 In all of the evidence provided in this proceeding, Du Pont has not presented a direct comparison with the prior art products disclosed in the references used in the rejections. Arguments and evidence directed to purported distinctions between the claimed interpolymers and free-radical polyethylene, linear polyethylene or copolymers of ethylene with propylene or butene have little, if any, relevance when the applied prior art, e.g., the Witt and Leatherman copolymers, Vandenberg '963 and Nowlin, specifically discloses copolymers of ethylene with alpha olefins having five or more carbon atoms. Thus, the proffered evidence does not provide a proper comparison with the closest prior art.

 

 

 In summary, it appears that the specific strength properties of linear polyethylene and copolymers of ethylene with propylene, butene, or other alpha olefins having five or more carbon atoms, especially those formed using coordination catalysts as in the '698 patent and Anderson '917, is due more to how the resin was polymerized than to the identity of the monomer units of the resin. Since the relevant polymerization concepts were in the prior art at the time this invention was made, we do not find that the evidence directed to the so-called superior properties is entitled to much weight.

 

 

COMMERCIAL SUCCESS

 

 The evidence of commercial success includes sales data of interpolymers of ethylene with higher alpha olefins by Du Pont (A14459-60) and Phillips (A8396- 402). Apparently the commercial resins produced and sold by Phillips were for the most part hexene copolymers (A16514-22) while the sales of Du Pont were apparently of octene or decene copolymers (A1295, 16523-36). Certain licensing activity in regard to the '698 patent is also relied upon as evidence of commercial success.

 

 

 As presented on page 31 of the Appeal Brief, the primary basis of the Du Pont portion of the alleged commercial success is the volume of the commercial production of octene and decene copolymers. It is asserted that the properties of these copolymers allowed Du Pont to penetrate several markets of other polymers including butene copolymers.

 

 

 The only evidence of this market penetration is the testimony of certain Du Pont witnesses in the original trial concerning the replacement of butene copolymers by octene copolymers in the U.K. natural gas pipe market in 1977-78 because the butene copolymers did not qualify under newly issued specifications (A1302-03, 1330). However, it is not clear on this record why and in what manner the U.K. specification for gas distribution pipe was changed such that butene copolymers no longer qualified. Thus, it cannot be determined on this record if the replacement of butene copolymer by octene copolymer in this specific market was due to the technical merits of the present invention or by some other extraneous, nonrelevant factor(s). Further, despite their replacement in this single market, Du Pont continued to produce butene copolymers until their production was phased out in 1984 (A1302-03).

 

 

  *27 Phillips also continued to produce butene copolymers in substantial quantities after higher alpha olefin copolymers were introduced to the marketplace (A7374-5). While the volume of the butene copolymers decreased in the relevant time period, Du Pont has not pointed to any evidence of record which establishes that this decrease is attributable in any substantial sense to the marketing of the higher alpha olefin copolymers.

 

 

 Absent a more detailed comparison of the growth of commercial sales of copolymers within the claims on appeal with sales of homo- or copolymers which were purportedly displaced, accompanied by evidence establishing why such a displacement occurred, this portion of the evidence of commercial success is entitled to little weight.

 

 

 Du Pont has not provided an explanation in the briefs as to what portion of the commercial sales of polymer products by itself and Phillips are actually within the claims on appeal. One of the publications relied upon by Du Pont in regard to the Phillips' commercial sales, A8084, is directed to a hexene copolymer having a density of .955. Most of the claims on appeal have an upper density limit of .95 with some of the claims, e.g., claim 19, allowing this upper limit to be reached only at certain alpha olefin monomer content. [FN17]

 

 

 It is also apparent from this record that economic factors, especially the price of the higher alpha olefins vis-a-vis lower monoolefins such as butene, has played a role in the business decisions involved in making commercial amounts of these copolymers (A255-58, A17393-95). The interplay which occurs between cost and commercial sales of the type of copolymers under consideration herein is apparent from the following portion of Dr. Beasley's deposition (A17401-02):

   Q. In or around 1970, after you left Sabine, do you know whether you had an opinion as to whether the ethylene-octene copolymers were a successful commercial product?

   A. Yes, I had an opinion.

   Q. Do you have an opinion as to whether the ethylene-butene copolymers were a successful product?

   A. Yes, I have an opinion.

   Q. Were the butene copolymers more successful than the octene copolymers?

   A. That obviously depends on your definition of "success." They were both successful in the sense that they met certain commercial uses. In my opinion, the ethylene-octene copolymers had superior properties. But, because octene was more expensive and the price did not come down as expected, correspondingly, the copolymers were more expensive. And from a commercial standpoint, the cost, price carries a very heavy weight in terms of how much is made and sold.

   My opinion is that the ethylene-octene copolymers were always superior from the standpoint of performance. The ethylene-butene copolymers had a lower price tag and more pounds were sold.

   Q. So the customers just wanted the ethylene-butene copolymers at the lower price?

   A. The best way to summarize it is they preferred the lower price and were willing to accept properties that were not quite as good in order to get the lower price.

 

 

  *28 Du Pont has not established in its briefs where the record in this proceeding quantifies the differences in properties between the butene resins and the higher alpha olefin resins Du Pont was commercially marketing which Dr. Beasley characterized as "not quite as good." Nor has Du Pont provided evidence from prospective customers or actual purchasers of these commercial products that establishes that a specific property of any commercial interpolymer of ethylene and an alpha olefin containing five or more carbon atoms played a significant role in purchasing such resins.

 

 

 Another aspect of the commercial sales by Du Pont which has not been adequately addressed on this record is whether the growth in sales volume for these interpolymers is more properly attributed to technical aspects of converting them to useful products as opposed to the disclosed and claimed properties of the interpolymers.

 

 

 For example, the trial witness for Du Pont who testified with respect to the commercial success issue stated in regard to one product, small shopping bags, that the market did not develop until the industry learned to handle high density resins [FN18] and that these resins were selected for their "paper-like feel", a property which is neither disclosed or claimed (A1334).

 

 

 Another aspect of Du Pont's case of commercial success is based upon Phillips and other competitors heralding the so-called superior results in terms of ESCR in hexene copolymers over butene copolymers (Appeal Brief, pages 40-42). The December 2, 1968 article from Chemical and Engineering News relied upon by Du Pont in support of this argument brings up a relevant point which has not been addressed by Du Pont. As set forth in the cited portion of this article, there are other properties besides impact strength and stress crack resistance, e.g., flexural modulus, softening properties, hardness and elongation, which also determine the commercial suitability of a particular interpolymer for a specific end use. While Phillips and other competitors may have emphasized ESCR as an important property in some of their advertising, Du Pont has not pointed to any evidence of record that establishes that any resin was in fact sold with this purported improvement being a substantial determinative factor in the purchase decision as opposed to a potential customer considering and balancing all properties which are important in a particular end use with the cost of the respective resins under consideration.

 

 

 Du Pont has not established that the documented sales of its and Phillips' products had any significant nexus to the claimed subject matter, especially the specific properties by which Du Pont has chosen to define the claimed interpolymers. Consequently, this evidence is entitled to little, if any, weight.

 

 

COPYING

 

 The evidence directed to the asserted copying of the claimed invention by others revolves around the purported recognition of Phillips of the properties of the claimed interpolymers after the issuance of a foreign counterpart to the '698 patent in 1963 (Appeal Brief, pages 36-39).

 

 

  *29 As to evidence regarding alleged copying of the patented invention it is noted that:

   Rather than supporting a conclusion of obviousness, copying could have occurred out of a general lack of concern for patent property, in which case it weighs neither for nor against the nonobviousness of a specific patent. It may have occurred out of contempt for the specific patent in question, only arguably demonstrating obviousness, or for the ability or willingness of the patentee financially or otherwise to enforce the patent right, which would call for deeper inquiry. Even widespread copying could weigh toward opposite conclusions, depending on the attitudes existing toward patent property and the accepted practices in the industry in question. It is simplistic to assert that copying per se should bolster the validity of a patent.

Cable Electric Products, Inc. v. Genmark, Inc., supra, 770 F.2d at 1028, 226 USPQ at 889. Regardless of whether Phillips or any other competitor copied the present invention upon issuance of any foreign counterpart to the '698 patent, such evidence is entitled to little or no weight.

 

 

LICENSING

 

 As to the evidence Du Pont relies upon in regard to licensing, we note that both Dow and Mobil have stated that licenses were taken for business reasons apart from the patentability of the claims of the '698 patent. See Dow Appeal Brief, pages 8-9, Mobil Appeal Brief, pages, 14-15, Exhibit 2. Under these circumstances, we find that these arguments and evidence are entitled to little, if any, weight. EWP Corp. v. Reliance Universal, Inc., 755 F.2d 898, 907-908, 225 USPQ 20, 26 (Fed.Cir.1985).

 

 

CONCLUSIONS

 

Claims 1, 11, 33, and 37

 

 These claims are directed to interpolymers which, when placed in the form of a film, have ETS values within the range of 150-400 grams per mil. As argued by Du Pont in this proceeding, merely copolymerizing ethylene with propylene, butene or alpha olefins having five or more carbon atoms to form an interpolymer having the density and melt index values required by these claims does not necessarily mean that the resulting product will have an ETS value within the claimed range. This is amply illustrated by the results tabulated from the Du Pont development data in the trial exhibits referred to above. Thus, it can not be determined what portion, if any, of the commercial sales of resin by Du Pont, Phillips or others which may comply with the other requirements of these claims actually possessed the claimed ETS values. Therefore, in regard to the subject matter of these claims, the evidence of commercial success is entitled to little, if any, weight.

 

 

 In regard to Rejections G and I which are premised upon the copolymers disclosed in Vandenberg '693 and Nowlin respectively, Du Pont has not provided a direct comparison of representative interpolymers of these claims with those of Example 53 of Vandenberg '963 or Example II of Nowlin, arguably the closest exemplified copolymers in the prior art applied in these rejections. Absent such evidence, it can not be determined whether the claimed interpolymers possess properties which can be concluded to be unexpectedly different from those of the Vandenberg '963 and Nowlin copolymers.

 

 

  *30 Rejection H is based upon the generic description of copolymers of ethylene with other ethylenically unsaturated monomers using coordination catalysts in Anderson '645. In view of this generic disclosure, the ETS values tabulated in the Phillips trial exhibit may have more relevance to this specific rejection. However, the tabulated data only demonstrates that it is possible to obtain copolymers of ethylene with propylene, butene, or other alpha olefins having five or more carbon atoms, all of which are encompassed by the generic disclosure of copolymers in Anderson '645 which have ETS values within and without the 150-400 grams per mil range set forth in these claims. Du Pont has not explained why this data leads to the conclusion that the claimed interpolymers possess properties which are unexpectedly superior to those disclosed in Anderson '645.

 

 

 Further, in assigning weight to the evidence of superior properties relied upon by Du Pont, it must be kept in mind that it was known at the time of the present invention that the ETS values of copolymers such as those of Vandenberg '963 and Nowlin may be optimized if properly polymerized in accordance with the disclosure of Anderson '917. [FN19] Assuming arguendo that the claimed interpolymers were tested against the copolymers of Example 53 of Vandenberg '963 and Example II of Nowlin since they are the closest copolymers which are exemplified [FN20] and such testing established that the comparative interpolymers of these claims possessed a higher ETS value, it is not apparent from this record that such a difference would have been considered unexpected by those persons having ordinary skill in the art in view of the disclosure of Anderson '917.

 

 

 On this record, the evidence of unexpected superior results attributable to the interpolymers of claims 1, 11, 33, and 37 is entitled to little weight.

 

 

 Considering the evidence of nonobviousness in its entirety as it applies to the subject matter of claims 1, 11, 33, and 37 and balancing it against the weight of the evidence of obviousness relied upon by the examiner in Rejections G, H, and I, i.e., the references relied upon, it is our judgment that the proffered evidence of nonobviousness is of insufficient weight to outweigh the evidence of obviousness. Therefore, we conclude that the subject matter of claims 1, 11, 33, and 37 would have been obvious to one of ordinary skill in the art from a consideration of the references relied upon in Rejections G, H, and I.

 

 

Claims 3, 4, 6, 8, and 9

 

 Claims 3, 4, 6, 8, and 9 are directed to interpolymers of ethylene with n-dodecene-1, n-decene-1, n-heptene-1, and n-octene-1 respectively. These claims do not require the interpolymers to have any specific numerical or functional strength properties. Claims 3 and 4 place no limitation of the melt index the claimed interpolymers may have. It is improper to read any such limitations into these claims. In re Zletz, 893 F.2d 319, 322, 13 USPQ2d 1320, 1322 (Fed.Cir.1989); Du Pont II, 849 F.2d at 1432-33, 7 USPQ2d at 1131-32.

 

 

  *31 To the extent it is argued that the interpolymers of the present invention possess superior properties [FN21], these arguments are not relevant to these claims since they are clearly not limited in this manner. As argued by Du Pont, interpolymers which are defined only by monomer content, melt index and/or density, as in these claims, will not necessarily have the so-called superior properties. On their face, these claims are inclusive of obvious subject matter, i.e., interpolymers of ethylene with the stated alpha olefins which do not possess the so-called superior properties. As such, they are unpatentable under 35 USC § 103. In re Mraz, 455 F.2d 1069, 173 USPQ 25 (CCPA 1972).

 

 

 Du Pont has not relied upon any specific evidence of nonobviousness in rebuttal of this rejection of these claims. Assuming arguendo that the evidence relied upon would establish that any single interpolymer within these claims possessed unexpectedly superior qualities or was a commercial success, such evidence would clearly not be commensurate in scope with these claims. In re Lindner, supra; In re Tiffin, supra. Therefore, we conclude that the subject matter of claims 3, 4, 6, 8, and 9 would have been obvious to one of ordinary skill in the art from a consideration of the prior art relied upon in Rejections F, G, H, and I.

 

 

Claims 12, 26, 32, and 36

 

 Claims 26, 32, and 36 are directed to interpolymers of the specified composition having the stated hoop stress values. Claim 12 is directed to pipes made from the specified interpolymers having the stated hoop stress values.

 

 

 As to the evidence of superior properties, Du Pont has not pointed to where in this record there is any comparative showing based upon hoop stress values between interpolymers or pipe made therefrom according to these claims with the copolymers disclosed in the prior art relied upon in Rejections F, G, H, and I. There is no basis in this record to conclude that any of the interpolymers of these claims differ in any manner from those of the applied prior art in terms of hoop stress values, let alone a basis to conclude that such a difference would have been considered unexpected by one of ordinary skill in the art. Thus, the evidence of unexpected properties is entitled to little, if any, weight in regard to these claims.

 

 

 Du Pont has not discussed the evidence of commercial success in any detail in regard to any of these claims. While the district court found in its decision on remand that certain of the Phillips' commercial hexene copolymers infringed claim 12 under the doctrine of equivalents and that certain of the pipe products sold by Phillips directly infringed claim 12, Du Pont III, 11 USPQ2d 1100, Du Pont has not presented any reasoned basis why this finding constitutes a basis for concluding that the subject matter of claim 12 can be considered a commercial success. For example, all of the infringing products were hexene copolymers having density and melt index values in relatively narrow ranges so that it is not apparent that these products are commensurate in scope with claim 12 as required. In re Tiffin, supra. Nor have the sales figures of these products been placed in the required perspective. Kansas Jack, Inc. v. Kuhn, supra. Thus, we do not find that the evidence of commercial success as it might be relevant to claims 12, 26, 32, and 36 is entitled to much weight.

 

 

  *32 Considering the evidence of nonobviousness in its entirety as it pertains to the subject matter of claims 12, 26, 32, and 36, we conclude that it is of insufficient weigh to outweigh the evidence of obviousness as provided by the references relied upon in each of Rejections F, G, H, and I. Accordingly, we affirm Rejections F, G, H, and I as they apply to claims 12, 26, 32, and 36.

 

 

Claims 13, 34, and 38

 

 Claim 13 is directed to a fabricated molding made from the specified interpolymer having a stress crack resistance of greater than 1000 hours using an unnotched specimen. Claims 34 and 38 are directed to interpolymers having this stress crack resistance value when placed in the form of a fabricated molding.

 

 

 The specification of the '698 patent sets forth a number of methods for determining the stress crack resistance of the claimed interpolymers. As set forth at column 10, lines 25-65 of the patent, the interpolymer specimens to be tested may be notched or unnotched with the test being performed in air or in the presence of an active environment, e.g., an Igepal surfactant. As seen from Tables VI, VII, and VIII of the '698 patent, the 1000 hour standard set forth in these claims was based upon an unnotched test specimen with the test being performed at 100<<degrees>> C in air. Thus, the only testing reported in this record which is relevant to these claims is that in which the stress crack resistance was measured using an unnotched specimen in air at 100<<degrees>> C. Testing such as that reported in Tables VI, VII, and VIII of the '698 patent performed on notched specimens in Igepal at 50<<degrees>> C is not relevant to these claims.

 

 

 There is stress crack resistance data in this record beyond that reported in Tables VI, VII, and VIII of the '698 patent which was obtained from tests run under the appropriate conditions. See A14508-12. [FN22] However, Du Pont has not established on this record that any of this data represents a comparison of the claimed interpolymers with the copolymers of ethylene with alpha olefins containing five or more carbon atoms described by Witt and Leatherman, Vandenberg '693, Nowlin, or Anderson '645. Nor has Du Pont established that the obtention of the 1000 hour value used as a standard represents a result that would have been considered by one of ordinary skill in the art to be unexpected in view of the disclosure of Anderson '917 that these copolymers may have their "toughness" optimized by using the disclosed polymerization techniques. Accordingly, the evidence of unexpectedly superior results as it pertains to these claims is entitled to little, if any, weight.

 

 

 Nor has Du Pont established on this record the proportion, if any, of the commercial resin sales by itself and Phillips which actually possessed the stress crack resistance value required by these claims or any of the other claimed parameters, e.g., melt index, density, monomer identity and content. Du Pont has not sustained its burden of establishing that any of the resins or products encompassed by these claims can be properly concluded to be a commercial success. This evidence is entitled to little, if any, weight as it pertains to claims 13, 34, and 38.

 

 

  *33 Balancing the weight of the evidence of nonobviousness considered in its entirety as it pertains to these claims against the weight of the evidence of obviousness as provided by the references applied against these claims in Rejections F, G., H, and I, it is our judgment that the evidence of nonobviousness does not outweigh the evidence of obviousness. Therefore, we conclude that the subject matter of claims 13, 34, and 38 would have been obvious to one of ordinary skill in the art from a consideration of the references relied upon in Rejections F, G, H, and I.

 

 

Claims 15, 35, and 39

 

 Claim 15 is directed to a coated wire product where the interpolymer used in the coating withstands more than 1000 hours in air in the Western Electric wire twist test. Claims 35 and 39 are directed to interpolymers which, when placed in wire coating form, possess this value in the Western Electric wire twist test.

 

 

 The only objective evidence regarding the Western Electric test referenced in these claims appears in Table V of the '698 patent. Again, the reported results show that all copolymers of ethylene and butene or alpha olefins having five or more carbon atoms having density and melt index values within the ranges called for by these claims will not necessarily have this strength value. Table V does not represent a comparison with the copolymers of Witt and Leatherman, Vandenberg '963, Nowlin or Anderson '645 which would expectedly have strength values suitable for this utility per the disclosure of, e.g., Anderson '917, column 10, lines 57-62. Clearly, the very limited showing of Table V, besides not being a proper comparison with the closest prior art, is not commensurate in scope with the claims. On this record, the evidence of superior results is entitled to little, if any, weight in regard to claims 15, 35, and 39.

 

 

 While certain of the commercial resins sold by Du Pont were used in wire coating, Du Pont has not established on this record that any of the commercially sold products had the claimed Western Electric wire twist test value or, for that matter, that this parameter had any significant role in customers buying these resins for this utility. Again, the burden of proof is on Du Pont to rebut the prima facie cases of obviousness. Broad allegations of "commercial success" are not a sufficient rebuttal. On this record, the evidence of commercial success is entitled to little if any weight.

 

 

 Considering the weight of the relevant evidence of nonobviousness in its entirety and weighing it against the evidence of obviousness, i.e., the references relied upon by the examiner in Rejections F, G, H, and I, we conclude that the rebuttal evidence is of insufficient weight to outweigh the evidence of obviousness. Accordingly, we conclude that the subject matter of claims 15, 35, and 39 would have been obvious to one of ordinary skill in the art from a consideration of the references relied upon in Rejections F, G, H and I.

 

 

Claims 27, 16 through 19, 20, 23, 24, 28 through 31, 40, and 41

 

  *34 These claims are directed to various interpolymers which possess superior impact strength or environmental stress crack resistance values than those obtained in comparable free radical or linear polyethylenes, interpolymers of ethylene with butene or ethylene and propylene. [FN23] As noted above, our conclusion that the preambular description of the interpolymers of these claims is indefinite under 35 USC § 112, second paragraph, makes the application of prior art and evaluation of the rebuttal evidence difficult. However, our review of the evidence relied upon by Du Pont in this proceeding leads us to the conclusion that very little of the evidence, if any, is relevant to these claims.

 

 

 Assuming for the moment the metes and bounds of these claims were readily ascertainable, Du Pont has not established by objective evidence that the specific copolymers of Witt and Leatherman do not in fact have the claimed properties. Nor has Du Pont pointed to any objective evidence that serves to establish that the subgenus of interpolymers called for by these claims differs as a class from the generic class of copolymers of ethylene with alpha olefins having five or more carbon atoms described by Vandenberg '963, Anderson '645 and Nowlin or from any specific copolymer disclosed therein in any unexpected manner.

 

 

 Further assuming that any of the objective evidence of record is relevant, Du Pont has not satisfied its burden of explaining why the obtention of such results would have been considered unexpected by one of ordinary skill in the art when the teachings of Anderson '917 are taken into account, i.e., the claimed class of interpolymers is the obvious and expected result of "properly polymerizing" interpolymers of ethylene and alpha olefins having five or more carbon atoms according to the tenets of Anderson '917.

 

 

 On this record, we conclude that the evidence of superior results is entitled to little, if any, weight in regard to claims 27, 16 through 20, 23, 24, 28 through 31, 40, and 41.

 

 

 The evidence of commercial success as applied to these claims suffers for the most part from the same defects outlined above in the other rejections. There is no specific analysis of how this evidence relates to any of these claims. Assuming the metes and bounds of the questioned limitations could be reasonably determined, it is not apparent from this record which products that were sold possessed the claimed functional limitations or what role these properties had in such sales.

 

 

 We recognize that claim 23 is limited to interpolymers of ethylene with n-octene-1 and that the bulk of commercial resin sales attributed to Du Pont were of such interpolymers. But Du Pont has not set forth any analysis of the sales figures or sufficient specific background information in regard to the reasons why any of these resins were purchased so that it can be determined if the commercial sales are commensurate in scope with this claim and if there was a nexus between the sales of these interpolymers and the limitations of this claim. The evidence of commercial success as it applies to claims 27, 16 through 20, 23, 24, 28 through 31, 40, and 41 is entitled to little, if any, weight.

 

 

  *35 We have considered the evidence of nonobviousness in its entirety as it is relevant to these claims and conclude that it is of insufficient weight to outweigh the evidence of obviousness relied upon by the examiner in rejecting these claims. Therefore, we conclude that the subject matter of claims 27, 16 through 20, 23, 24, 28 through 31, 40, and 41 would have been obvious to one of ordinary skill in the art from a consideration of the references applied in Rejections F, G, H, and I.

 

 

 The decision of the examiner is affirmed.

 

 

 No time period for taking any subsequent action in connection with this appeal may be extended under 37 CFR 1.136(a). See the final rule notice, 54 F.R. 29548 (July 13, 1989), 1105 O.G. 5 (August 1, 1989).

 

 

AFFIRMED

 

 

BOARD OF PATENT APPEALS AND INTERFERENCES

 

 

James A. Seidleck

 

 

Examiner-in-Chief

 

 

John T. Goolkasian

 

 

Examiner-in-Chief

 

 

William F. Smith

 

 

Examiner-in-Chief

 

 

FN1. The terms "interpolymer" and "copolymer" have been used interchangeably in this proceeding.

 

 

FN2. Papers located in the reissue file will be designated RI, Paper No.; papers located in the reexamination file will be designated RX, Paper No.

 

 

FN3. A fourth protest was filed in the reissue application by Allied Corporation (RI, Paper No. 79, Dec. 10, 1985). Under the rules then in effect for protests, Allied was not granted active status.

 

 

FN5. The examiner indicated that claim 1, not claim 11, was included in this rejection in the Examiner's Answer. We view this as an inadvertent error since claim 11 has been consistently included in this rejection, not claim 1.

 

 

FN6. Du Pont filed a copy of the trial record in this merged proceeding. (RI, Paper No. 24, July 19, 1989). In accordance with the designation process used by Du Pont, citation to the record will be made as "A ______" which refers to the page number(s) of the record as submitted.

 

 

FN7. In 1957, the Elmendorf test was a recognized test for measuring the tear strength of paper and was being adapted by researchers in this field to measure the tear strength of resin films. There is no evidence in the record that at the time of this invention, uniform standards were in existence for using this test for plastic films. When the Elmendorf test was tentatively proposed in 1961 and finally adopted in 1967 by the ASTM as a standard for measuring the tear strength of resin films as ASTM Test D 1922-67, the test standard as issued by ASTM stated (RI, Paper No. 21, Appendix A, Tab 9, page 642):

   There is not a direct, linear relationship between tearing force and specimen thickness. Data from this method are expressed as tearing force in grams, with specimen thickness also reported. But sets of data from specimens of dissimilar thickness are usually not comparable. Therefore, only data at the same thickness can be compared.

 

 

FN8. It should be noted that Dr. Beasley's testimony is not based upon his personal knowledge of how the films tested for ETS in the '698 patent were formed in (A939).

 

 

FN9. Since the '698 patent did not incorporate the disclosure of the parent application by reference, that disclosure was not brought forward into the ' 698 patent. In re De Seversky, 474 F.2d 671, 177 USPQ 144 (CCPA 1973). To the extent potential infringement is a relevant concern under this section of the statute, In re Hammack, supra, the public was granted access to the parent application when the '698 patent issued. 37 CFR § 1.14(b). However, the parent application not only stated that the film samples from which the data in Tables I and II were obtained were molded, it also stated that the films could also be prepared by extrusion. Thus, in viewing the claims of the '698 patent upon issuance in light of the then available disclosure of the parent application, there was confusion as to how the samples were prepared and no disclosure as to how thick they were.

 

 

FN10. This point is further exemplified by Du Pont's argument at pages 60-61 of the Appeal Brief concerning a Phillips' product brochure. As stated by Du Pont, the brochure (A8084) makes a comparison between resins of equivalent, not comparable, melt index and density.

 

 

FN11. This comparison raises another question concerning the definiteness of these claims, i.e., which and/or how many of the myriad of tests which are used to determine impact strength and ESCR must be run in order to determine whether a potentially infringing product does fall within the scope of these claims? The '698 patent discloses the Western Electric wire twist test as a stress crack resistance test as well as a series of ESCR tests at column 10, lines 33- 61 where samples may be notched or unnotched, tested in air or a surfactant, at various temperatures. Further, there are tests beyond the ETS test for determining impact strength such as the Izod test which like the ESCR tests may be run with varying samples under a multitude of conditions. The '698 patent does not provide any guidance as to which and/or how many of these are recognized tests for impact strength and ESCR need be run before one may be assured a given copolymer is within or without the claims of the '698 patent.

 

 

FN12. We do disagree with the language used by the examiner in regard to his consideration of the claim limitations found to be indefinite under 35 USC § 112, second paragraph. Specifically, the examiner stated at pages 14-15 of the Answer that the "comparable" and "superior" limitations are of "no patentable significance" since they are indefinite. However, as set forth in Steele, this approach is incorrect. See also In re Wilson, 57 CCPA 1029, 424 F.2d 1382, 165 USPQ 494 (1970). We view this statement as harmless error since it is clear from the statement of the rejection that the basis of the examiner's conclusion of prima facie obviousness is that the claimed copolymers would expectedly have properties similar to those of the copolymers of Vandenberg '963.

 

 

FN13. A more detailed discussion of the relevant teachings of Anderson '917 is set forth infra where the rebuttal evidence is discussed.

 

 

FN14. In considering the arguments and evidence concerning the properties of the claimed copolymers it must be kept in mind that the '698 patent was drafted with linear polyethylene, free radical polyethylene and copolymers of ethylene with propylene or butene as the relevant prior art. The comparisons in the '698 patent and in the present record which are based upon objective evidence, i.e., actual testing of various polymers, are between these products. However, as is abundantly clear from the prior art relied upon in the present rejections, copolymers of ethylene with higher alpha olefins having five or more carbon atoms which possess various properties within the ranges set forth in the claims on appeal are prior art to the present claims under 35 USC § 102(e) or (g). This prior art was not recognized or treated in the '698 patent or, for the most part, in the evidence submitted in this proceeding.

 

 

FN15. Du Pont also relies upon a 1987 publication by Ishikawa et al. on pages 6-7 of the Reply Brief as further evidence of the importance of conducting the polymerization in a proper manner in order to achieve the so-called superior properties. Ishikawa introduces the concept of side chain distribution in the various fractions into which the present copolymers or interpolymers may be separated as relevant to the ESCR properties of the resin. The reference discloses that the best ESCR is obtained when the side chains predominantly occur in the heavier fractions. We do not view this reference as being particularly helpful to Du Pont's position since it further undercuts the arguments previously made in this proceeding that the allegedly superior properties of the claimed interpolymers were achieved merely by the presence of the longer side chains provided by the alpha olefins having more than five carbon atoms.

 Ishikawa discloses that resin PE-C, an ethylene-butene copolymer, had higher ESCR values than resins PE-D, -E, -F, and -G which are copolymers of ethylene and hexene-1, 4 methyl pentene-1, hexene-1, and octene respectively. Thus, if copolymers of ethylene with butene were in fact considered to be the closest prior art, instead of the copolymers of ethylene with alpha olefins having five or more carbon atoms disclosed by the references relied upon in the rejections, Ishikawa is evidence that such butene copolymers may be polymerized to have ESCR values superior to those of corresponding copolymers of ethylene with alpha olefins having five or more carbon atoms.

 

 

FN16. The district court's findings in regard to the so-called superior properties of the interpolymers of the '698 patent are only relevant to claims 1 and 12 since these are the only claims before the court in the remand proceeding. In reaching its conclusion upon remand that Phillips had not sustained its burden of proof in establishing the invalidity of these two claims under 35 USC § 103, the court did not have Anderson, '917 before it. Thus, we do not find that the district court's conclusion in that matter has any particular relevance to this proceeding.

 

 

FN17. The district court's conclusions in regard to commercial success are entitled to little weight in this proceeding since the evidence was evaluated in light of the burdens imposed on the respective paries in that litigation. For example, Phillips' reliance upon ex parte cases such as In re Tiffin, supra, in response to Du Pont's arguments and evidence concerning commercial success was dismissed by the district court since the cases were "patent application cases.", Du Pont I, 2 USPQ2d at 1565. To whatever extent such "patent application cases" were not relevant in the district court proceedings, they are relevant in this proceeding. Tiffin imposes a burden on Du Pont of providing evidence in support of its arguments of commercial success which is commensurate in scope with the claims on appeal. Du Pont has not explained, and it is not apparent, how this burden has been met in this proceeding.

 

 

FN18. It is not apparent whether these so-called high density resins are within the scope of any of the claims on appeal.

 

 

FN19. This knowledge also applies to the copolymers of Anderson '645 although Anderson '917 was not applied by the examiner in Rejection H.

 

 

FN20. We are cognizant that the generic disclosures of Vandenberg '963 and Nowlin of copolymers of ethylene and alpha olefins having five or more carbon atoms encompass copolymers having melt index values within the claimed range, i.e., the interpolymers set forth in claims 1, 11, 33, and 37 are a subgenus of those disclosed in Vandenberg '963 and Nowlin as well as Anderson '645. Under these circumstances, Du Pont's burden may actually be to establish that the claimed smaller subgenus of interpolymers differs as a class from the larger class of copolymers disclosed in these three primary references. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).

 

 

FN21. See, e.g., the reference to column 3, lines 15-18 of the '698 patent at page 20 of the Reply Brief. We note that this statement in the specification of the '698 patent does not constitute evidence. In re DeBlauwe, 736 F.2d 699, 222 USPQ 191 (Fed.Cir 1984) (conclusory statements in the specification do not serve as factual evidence).

 

 

FN22. The stress crack data reported at A14503-07 and A14513-18 was obtained either from notched samples or from tests using Igepal.

 

 

FN23. Claim 29 is directed to a thin film made from such interpolymers.

 

 

APPENDIX

 

CLAIMS ON APPEAL

 

  *36 1. An interpolymer composed of interpolymerized comonomers consisting essentially of ethylene and at least one normal aliphatic mono-alpha-olefinic hydrocarbon containing from 5 to 10 carbon atoms per molecule, the proportion of said monoolefinic hydrocarbon being from 3 to 7% of the weight of the interpolymer, said interpolymer having a melt index within the range of 0.3 to 20, and, when in the form of a film, an Elmendorf tear strength in the range of 150 to 400 grams per mil, and a density of 0.93 to 0.94.

 

 

 3. An interpolymer of ethylene and from 1% to 20% by weight of n-dodecene-1 said interpolymer having essentially no other copolymerized components, the proportion of the interpolymerized ethylene component therein being not less than 80% nor more than 99% by weight, the percentage crystallinity of the interpolymer being such that the density ranges from 0.95 at 1% interpolymerized n-dodecene-1 down to 0.9 at 20% interpolymerized n-dodecene-1.

 

 

 4. An ethylene/n-decene-1 interpolymer having a density of 0.94 to 0.95, the n-decene-1 component thereof being from 1 to 3% by weight of said interpolymer.

 

 

 6. An interpolymer of ethylene and n-heptene-1, said interpolymer being further characterized in that it has an X-ray crystallinity in the range of 40 to 70%, a melt index in the range of 0.3 to 20, a density in the range of 0.9 to 0.95 and said interpolymer being further characterized in that its density is not less than 0.93 unless the content of said n-neptene-1 in the interpolymer is at least 3% by weight.

 

 

 8. An interpolymer of ethylene and n-decene-1, said interpolymer being further characterized in that it has an X-ray crystallinity in the range of 40 to 70%, a melt index in the range of 0.3 to 20, a density in the range of 0.9 to 0.95 and said interpolymer being further characterized in that its density is not less than 0.93 unless the content of said n-decene-1 in the interpolymer is at least 3% by weight.

 

 

 9. An interpolymer of ethylene and n-octene-1, said interpolymer being further characterized in that it has an X-ray crystallinity in the range of 40 to 70%, a melt index in the range of 0.3 to 20, a density in the range of 0.9 to 0.95 and said interpolymer being further characterized in that its density is not less than 0.93 unless the content of said n-octane-1 in the interpolymer is at least 3% by weight.

 

 

 11. An interpolymer of ethylene and a higher olefinic hydrocarbon having 5 to 10 carbon atoms per molecule, said higher olefinic hydrocarbon having one terminal, -C=CH"2"per molecule and no other olefinic unsaturation, said interpolymer being further characterized in that it has an X-ray crystallinity in the range of 40 to 70%, a melt index in the range of 0.3 to 20, a density in the range of 0.9 to 0.95 and said interpolymer being further characterized in that its density is not less than 0.93 unless the content of said higher olefinic hydrocarbon in the interpolymer is at least 3% by weight and by having in film form an Elmendorf tear strength in the range of 150-400 grams/mil and a density of 0.910 to 0.935.

 

 

  *37 12. An interpolymer of ethylene and a higher olefinic hydrocarbon having 5 to 10 carbon atoms per molecule in the form of pipe, said higher olefinic hydrocarbon having one terminal -CH=CH@2 per molecule and no other olefinic unsaturation, said interpolymer being further characterized in that it has an X-ray crystallinity in the range of 40 to 70%, a melt index in the range of 0.3 to 20, a density in the range of 0.9 to 0.95 and said interpolymer being further characterized in that its density is not less than 0.93 unless the content of said higher olefinic hydrocarbon in the interpolymer is at least 3% by weight and by withstanding 3000 hours at hoop stress of 750 psi and a temperature of 60<<degrees>> C.

 

 

 13. An interpolymer of ethylene and a higher olefinic hydrocarbon having 5 to 10 carbon atoms per molecule in the form of a fabricated molding, said higher olefinic hydrocarbon having one terminal, -CH=CH"2"per molecule and no other olefinic unsaturation, said interpolymer being further characterized in that it has an X-ray crystallinity in the range of 40 to 70%, a melt index in the range of 0.3 to 20, a density in the range of 0.9 to 0.95 and said interpolymer being further characterized in that its density is not less than 0.93 unless the content of said higher olefinic hydrocarbon in the interpolymer is at least 3% by weight and by having a stress crack resistance of greater than 1000 hours using an unnotched test specimen.

 

 

 15. As an article of commerce, wire coated with an interpolymer of ethylene and a higher olefinic hydrocarbon having 5 to 10 carbon atoms per molecule, said higher olefinic hydrocarbon having one terminal -CH=CH"2"per molecule and no other olefinic unsaturation, said interpolymer being further characterized in that it has an X-ray crystallinity in the range of 40 to 70%, a melt index in the range of 0.3 to 2.1, a density in the range of 0.910 to 0.945 and said interpolymer being further characterized in that its density is not less than 0.93 unless the content of said higher olefinic hydrocarbon in the interpolymer is at least 3% by weight and characterized in that the wire-coating withstands more than 1000 hours in air without failure in the Western Electric wire twist test.

 

 

 16. Composition of claim 27, wherein said higher olefinic hydrocarbon is n-tetradecene-1.

 

 

 17. Composition of claim 27, wherein said higher olefinic hydrocarbon is n-octadecene-1.

 

 

 18. Composition of claim 27, wherein said higher olefinic hydrocarbon is 4- methyl-1-pentene.

 

 

 19. An interpolymer having impact strength or environmental stress crack resistance properties that are superior to those obtained with comparable free-radical polyethylenes, linear polyethylenes, interpolymers of ethylene and propylene and interpolymers of ethylene and butane, said interpolymer being an interpolymer of ethylene and from 1% to 20% by weight of a higher normal aliphatic olefinic hydrocarbon having 5 to 10 carbon atoms per molecule, said higher normal aliphatic olefinic hydrocarbon having no non-aromatic unsaturation other than one terminal -CH=CH"2"per molecule, said interpolymer having essentially no other copolymerized components, the proportion of the interpolymerized ethylene component therein being not less than 80% nor more than 99% by weight, the percentage of crystallinity of the interpolymer being such that the density ranges from 0.95 at 1% interpolymerized higher normal aliphatic olefinic hydrocarbon down to 0.9 at 20% interpolymerized higher normal aliphatic olefinic hydrocarbon, and the melt index of said interpolymer being within the range of 0.2 to 20.

 

 

  *38 20. An interpolymer having impact strength or environmental stress crack resistance properties that are superior to those obtained with comparable free-radical polyethylenes, linear polyethylenes, interpolymers of ethylene and propylene and interpolymers of ethylene and butene, said interpolymer being an interpolymer of ethylene and from 1% to 20% by weight of a higher normal aliphatic olefinic hydrocarbon having 5 to 18 carbon atoms per molecule, said higher normal aliphatic olefinic hydrocarbon having no non-aromatic unsaturation other than one terminal -CH=CH"2"per molecule, said interpolymer having essentially no other copolymerized components, the proportion of the interpolymerized ethylene component therein being not less than 80% nor more than 99% by weight, the percentage crystallinity of the interpolymer being such that the density ranges from 0.95 at 1% interpolymerized higher normal aliphatic olefinic hydrocarbon down to 0.9 at 20% interpolymerized higher normal aliphatic olefinic hydrocarbon, and said interpolymer having a melt index in the range of 0.2 to 20.

 

 

 23. Composition of claim 19, wherein said higher normal aliphatic olefinic hydrocarbon is n-octene-1.

 

 

 24. An interpolymer having impact strength or environmental stress crack resistance properties that are superior to those obtained with comparable free-radical polyethylenes, linear polyethylenes, interpolymers of ethylene and propylene and interpolymers of ethylene and butene, said interpolymer being an interpolymer of ethylene and a higher normal aliphatic olefinic hydrocarbon having 5 to 10 carbon atoms per molecule, said higher normal aliphatic olefinic hydrocarbon having one terminal -CH=CH"2"per molecule and no other olefinic unsaturation, said interpolymer being further characterized in that it has an X-ray crystallinity in the range of 40 to 70%, a melt index in the range of 0.3 to 20, a density in the range of 0.9 to 0.95 and said interpolymer being further characterized in that its density is not less than 0.93 unless the content of said higher normal aliphatic olefinic hydrocarbon in the interpolymer is at least 3% by weight.

 

 

 26. An interpolymer of ethylene and from 1% to 20% by weight of a higher olefinic hydrocarbon having 5 to 18 carbon atoms per molecule, said higher olefinic hydrocarbon having no non-aromatic unsaturation other than one terminal -CH=CH"2"per molecule, said interpolymer having essentially no other copolymerized components and having a melt index in the range of 0.2 to 20, the proportion of the interpolymerized ethylene component therein being not less than 80% nor more than 99% by weight, the percentage crystallinity of the interpolymer being such that the density ranges from 0.95 at 1% interpolymerized higher olefinic hydrocarbon down to 0.9 at 20% interpolymerized higher olefinic hydrocarbon, said interpolymer being further characterized by in pipe form withstanding 3000 hours at hoop stress of 750 psi and a temperature of 60<<degrees>> C.

 

 

  *39 27. An interpolymer having impact strength or environmental stress crack resistance properties that are superior to those obtained with comparable free-radical polyethylenes, linear polyethylenes, interpolymers of ethylene and propylene and interpolymers of ethylene and butene, said interpolymer being an interpolymer of ethylene and from 1% to 20% by weight of a higher olefinic hydrocarbon having 5 to 18 carbon atoms per molecule, said higher olefinic hydrocarbon having no non-aromatic unsaturation other than one terminal -CH=CH% 1@2"per molecule, said interpolymer having essentially no other copolymerized components and having a melt index in the range of 0.2 to 20, the proportion of the interpolymerized ethylene component therein being not less than 80% nor more than 99% by weight, the percentage crystallinity of the interpolymer being such that the density ranges from 0.95 at 1% interpolymerized higher olefinic hydrocarbon down to 0.9 at 20% interpolymerized higher olefinic hydrocarbon.

 

 

 28. An interpolymer having impact strength or environmental stress crack resistance properties that are superior to those obtained with comparable free-radical polyethylenes, linear polyethylenes, interpolymers of ethylene and propylene and interpolymers of ethylene and butene, said interpolymer being an interpolymer of ethylene and a higher olefinic hydrocarbon having 5 to 10 carbon atoms per molecule, said higher olefinic hydrocarbon having one terminal -CH=CH@2 per molecule and no other olefinic unsaturation, said interpolymer being further characterized in that it has an X-ray crystallinity in the range of 40 to 70%, a melt index in the range of 0.3 to 20, a density in the range of 0.9 to 0.95 and said interpolymer being further characterized in that its density is not less than 0.93 unless the content of said higher olefinic hydrocarbon in the interpolymer is at least 3% by weight.

 

 

 29. Composition of claim 28 in the form of a film.

 

 

 30. A composition of claim 28 having a density in the range of 0.910 to 0.945 and a melt index in the range of 0.3 to 2.1.

 

 

 31. Composition of claim 28, wherein said higher olefinic hydrocarbon is n-pentene-1.

 

 

 32. An interpolymer of ethylene and from 1% to 20% by weight of a higher normal alipathatic olefinic hydrocarbon having 5 to 10 carbon atoms per molecule, said higher normal aliphatic olefinic hydrocarbon having no non-aromatic unsaturation other than one terminal -CH=CH2 per molecule, said interpolymer having essentially no other copolymerized components, the proportion of the interpolymerized ethylene component therein being not less than 80% nor more than 99% by weight, the percentage of crystallinity of the interpolymer being such that the density ranges from 0.95 at 1% interpolymerized higher normal aliphatic olefinic hydrocarbon down to 0.9 at 20% interpolymerized higher normal aliphatic olefinic hydrocarbon, and the melt index of said interpolymer being within the range of 0.2 to 20, said interpolymer being further characterized by in pipe form withstanding 3000 hours at hoop stress of 750 psi and a temperature of 60<<degrees>> C.

 

 

  *40 33. An interpolymer of ethylene and from 1% to 20% by weight of a higher normal aliphatic olefinic hydrocarbon having 5 to 10 carbon atoms per molecule, said higher normal aliphatic olefinic hydrocarbon having no non-aromatic unsaturation other than one terminal -CH=CH2 per molecule, said interpolymer having essentially no other copolymerized components, the proportion of the interpolymerized ethylene component therein being not less than 80% nor more than 99% by weight, the percentage of crystallinity of the interpolymer being such that the density ranges from 0.95 at 1% interpolymerized higher normal aliphatic olefinic hydrocarbon down to 0.9 at 20% interpolymerized higher normal aliphatic olefinic hydrocarbon, and the melt index of said interpolymer being within the range of 0.2 to 20, said interpolymer being further characterized by having in film form an Elmendorf tear strength in the range of 150-400 grams/mil.

 

 

 34. An interpolymer of ethylene and from 1% to 20% by weight of a higher normal aliphatic olefinic hydrocarbon having 5 to 10 carbon atoms per molecule, said higher normal aliphatic olefinic hydrocarbon having no non-aromatic unsaturation other than one terminal -CH=CH2 per molecule, said interpolymer having essentially no other copolymerized components, the proportion of the interpolymerized ethylene component therein being not less than 80% nor more than 99% by weight, the percentage of crystallinity of the interpolymer being such that the density ranges from 0.95 at 1% interpolymerized higher normal aliphatic olefinic hydrocarbon down to 0.9 at 20% interpolymerized higher normal aliphatic olefinic hydrocarbon, and the melt index of said interpolymer being within the range of 0.2 to 20, said interpolymer being further characterized by having in the form of a fabricated molding a stress crack resistance of greater than 1000 hours using an unnotched test specimen.

 

 

 35. An interpolymer of ethylene and from 1% to 20% by weight of a higher normal aliphatic olefinic hydrocarbon having 5 to 10 carbon atoms per molecule, said higher normal aliphatic olefinic hydrocarbon having no non-aromatic unsaturation other than one terminal -CH=CH2 per molecule, said interpolymer having essentially no other copolymerized components, the proportion of the interpolymerized ethylene component therein being not less than 80% nor more than 99% by weight, the percentage of crystallinity of the interpolymer being such that the density ranges from 0.945 down to 0.9, and the melt index of said interpolymer being within the range of 0.2 to 20, said interpolymer being further characterized by in wire coating form withstanding more than 1000 hours in air without failure in the Western Electric wire twist test.

 

 

 36. An interpolymer of ethylene and from 1% to 20% by weight of a higher normal aliphatic olefinic hydrocarbon having 5 to 19 carbon atoms per molecule, said higher normal aliphatic olefinic hydrocarbon having no non-aromatic unsaturation other than one terminal -CH=CH2 per molecule, said interpolymer having essentially no other copolymerized components, the proportion of the interpolymerized ethylene component therein being not less than 80% nor more than 99% by weight, the percentage crystallinity of the interpolymer being such that the density ranges from 0.95 at 1% interpolymerized higher normal aliphatic olefinic hydrocarbon down to 0.9 at 20% interpolymerized higher normal aliphatic olefinic hydrocarbon, said interpolymer having a melt index within the range of 0.2 to 20, and said interpolymer being further characterized by in pipe form withstanding 3000 hours at hoop stress of 750 psi and a temperature of 60<<degrees>> C.

 

 

  *41 37. An interpolymer of ethylene and from 1% to 20% by weight of a higher normal aliphatic olefinic hydrocarbon having 5 to 14 carbon atoms per molecule, said higher normal aliphatic olefinic hydrocarbon having no non-aromatic unsaturation other than one terminal -CH=CH2 per molecule, said interpolymer having essentially no other copolymerized components, the proportion of the interpolymerized ethylene component therein being not less than 80% nor more than 99% by weight, the percentage crystallinity of the interpolymer being such that the density ranges from 0.95 at 1% interpolymerized higher normal aliphatic olefinic hydrocarbon down to 0.9 at 20% interpolymerized higher normal aliphatic olefinic hydrocarbon, said interpolymer having a melt index within the range of 0.2 to 20, and said interpolymer being further characterized by having in film form an Elmendorf tear strength in the range of 150-400 grams/mil.

 

 

 38. An interpolymer of ethylene and from 1% to 20% by weight of a higher normal aliphatic olefinic hydrocarbon having 5 to 18 carbon atoms per molecule, said higher normal aliphatic olefinic hydrocarbon having no non-aromatic unsaturation other than one terminal -CH=CH2 per molecule, said interpolymer having essentially no other copolymerized components, the proportion of the interpolymerized ethylene component therein being not less than 80% nor more than 99% by weight, the percentage crystallinity of the interpolymer being such that the density ranges from 0.95 at 1% interpolymerized higher normal aliphatic olefinic hydrocarbon down to 0.9 at 20% interpolymerized higher normal aliphatic olefinic hydrocarbon, said interpolymer having a melt index within the range of 0.2 to 20, and said interpolymer being further characterized by having in the form of a fabricated molding a stress crack resistance of greater than 1000 hours using an unnotched test specimen.

 

 

 39. An interpolymer of ethylene and from 1% to 20% by weight of a higher normal aliphatic olefinic hydrocarbon having 5 to 18 carbon atoms per molecule, said higher normal aliphatic olefinic hydrocarbon having no non-aromatic unsaturation other than one terminal -CH=CH2 per molecule, said interpolymer having essentially no other copolymerized components, the proportion of the interpolymerized ethylene component therein being not less than 80% nor more than 99% by weight, the percentage crystallinity of the interpolymer being such that the density ranges from 0.945 down to 0.9, said interpolymer having a melt index within the range of 0.2 to 20, and said interpolymer being further characterized by in wire coating form withstanding more than 1000 hours in air without failure in the Western Electric wire twist test.

 

 

 40. An interpolymer having impact strength or environmental stress crack resistance properties that are superior to those obtained with comparable free-radical polyethylenes, linear polyethylenes, interpolymers of ethylene and propylene and interpolymers of ethylene and butene, said interpolymer being an interpolymer of ethylene and from 1% to 20% by weight of 4-methyl-1-pentene, said interpolymer having essentially no other copolymerized components, the proportion of the interpolymerized ethylene component therein being not less than 80% nor more than 99% by weight, the percentage crystallinity of the interpolymer being such that the density ranges from about 0.95 at 1% interpolymerized 4-methyl-1-pentene down to about 0.9 at 20% interpolymerized 4-methyl-1-pentene, the melt index of said interpolymer being within the range of 0.2 to 20.

 

 

  *42 41. Composition of claim 19, wherein said higher olefinic hydrocarbon is n-decene-1.

 

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