Appeal 97-1803
Application 08/300,902
ordinary skill in the art to combine the teachings
of the references, and that would also suggest a
reasonable likelihood of success. Such a suggestion
or motivation may come from the references
themselves, from knowledge by those skilled in the
art that certain references are of special interest
in a field or even from the nature of the problem to
be solved. The district court never identified the
source of the various claim limitations in the prior
art, much less a motivation, teaching or suggestion
to combine them.
The examiner has not identified in the prior art relied
upon where there is a reason, suggestion or motivation to make
the claimed three-element composition. Gianchandai describes
compositions containing a poly(phenylene ether) resin and an
amide. No mention is made of a polyester. Moreover, when
Gianchandai gets around to talking about increased flow, it
describes addition of a styrene resin, not a polyester (col.
5, line 60 et seq.).
When making a rejection, it is incumbent on the examiner
to refer to specific passages in the prior art relied upon and
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