Appeal No. 1997-0045
Application 08/241,688
Gallay et al. (Gallay).2 We determine that the examiner has failed to make out a prima facie case in this
ground of rejection for the reasons pointed out by appellants in the brief, to which we add the following.
It is well settled that a prima facie case of obviousness under § 103 is established by showing
that some objective teaching, suggestion or motivation in the applied prior art taken as a whole and/or
knowledge generally available to one of ordinary skill in the art would have led that person to the
claimed invention as a whole, including each and every limitation of the claims, without recourse to the
teachings in appellants’ disclosure. See generally, Pro-Mold and Tool Co. v. Great Lakes Plastics
Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re Fine, 837 F.2d 1071,
1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chem. Co., 837 F.2d at 473, 5
USPQ2d at 1531-32.
While we agree with the examiner that Jablonsky discloses a process of manufacturing
reinforced structural products which includes the steps of adding an electrolyte to fibrous materials,
which includes wood fibers, followed by adding an adhesive (col. 2, line 39, to col. 4, line 3), we cannot
agree that the combined teachings of this reference and Gallay would have reasonably suggested to one
of ordinary skill in this art to modify the step of applying the electrolyte in such manner that non-
conductive pieces would reasonably be expected to become temporarily electrically conductive so that
an electric current will pass through said pieces and generate heat within the same as required by claim
1. Similarly, we do not find that this person would have found in such teachings the reasonable
suggestion to combine irregularly shaped pieces capable of absorbing and retaining moisture would be
combined with sufficient moisture and electrolyte with the reasonable expectation that such pieces would
become electrically conductive, apart from any adhesive additive, such that an electric current will pass
through said pieces and generate heat within the same as required by claim 41. Both claims require that
the pieces are made electrically conductive before being combined with adhesive.
We find that Jablonsky teaches that electrolytic materials, inter alia, acetylene black and
organic acid or salt, are added to, inter alia, the adhesive or fibrous materials (col. 2, lines 35-46).
The adhesive is later “applied by spraying, brushing, dipping or impregnating the fibrous material” (col.
2 The examiner in the answer (page 4) refers to the statement of the grounds of rejection in the Office
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