Appeal No. 95-0244
Application 08/035,832
Appellant also urges that the appealed claims eliminate
"an essential feature of Reske et al, i.e., polyurethane."
The argument is not persuasive because it is well settled that
the omission of an element, i.e., polyurethane, and its
intended function, as an impact modifier, is prima facie
obvious if the remaining elements perform the same function as
before. Cf. In re Karlson, 311 F.2d 581, 584, 136 USPQ 184,
186 (CCPA 1963). There is no evidence in the record to
indicate that the elimination of the polyurethane would have
any effect on the composition other than the elimination of
its function as an impact modifier.
Appellant urges that the declaration submitted under Rule
132 is sufficient to overcome the rejection under 35 U.S.C.
§ 103. However, we note that appellant's declaration does not
compare the claimed composition to the closest prior art
composition of Reske, i.e., Reske’s claim 8 which includes
polyoxymethylene, polyurethane and zinc oxide. Further, in
view of the fact that Reske specifically discloses and claims
the use of zinc oxide and polyoxymethylene compositions, we
agree with the examiner that the evidence of obviousness
outweighs the evidence submitted in the declaration, and the
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