Appeal No. 1997-0110
Application 08/236,258
not used as the matrix polymer in any of these examples.
Because Yagi’s invention is directed toward use of silane-
crosslinked fibers in combination with the matrix polymer, it
does not appear that Yagi would have fairly suggested, to one
of ordinary skill in the art, noncrosslinked fiber/matrix
polymer combinations which are not disclosed in the
comparative examples. The examiner argues that it would have
been obvious to one of ordinary skill in the art to eliminate
Yagi’s silane modification of the fibers along with its
function (answer, page 4). The examiner, however, has not
explained why the prior art would have led one of ordinary
skill in the art to do so. In order for a prima facie case of
obviousness to be established, the teachings from the prior
art itself must appear to have suggested the claimed subject
matter to one of ordinary skill in the art. See In re
Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976).
The mere fact that the prior art could be modified as proposed
by the examiner is not sufficient to establish a prima facie
case of obviousness. See In re Fritch, 972 F.2d 1260, 1266,
23 USPQ2d 1780, 1783 (Fed. Cir. 1992). Appellants’
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007