Appeal No. 1998-3251
Application 08/659,554
teachings, a reasonable suggestion to make the necessary modification to the composition of Kent. We
find that, on this record, it would not have been apparent to one of ordinary skill in this art from
Swartzmiller alone that an amount of polyolefin required by appealed claim 1 that is significantly less
than 15 parts by weight, would contribute the “stiffness” property to the composition of Kent as alleged
by the examiner, and the examiner has further not established that the melt viscosity of the polyolefins
described by Swartzmiller falls below the range taught by Kent, that is, within the melt flow range
specified by appealed claim 1. No knowledge in the prior art other than Swartzmiller has been
identified by the examiner as the basis for her position. The factual foundation for a case of prima facie
obviousness is not provided by “plausible” reasoning. See Rouffet, supra (“hindsight” is inferred when
the specific understanding or principal within the knowledge of one of ordinary skill in the art leading to
the modification of the prior art in order to arrive at appellant’s claimed invention has not been
explained); cf. Ex parte Levengood, 28 USPQ2d 1300, 1301-02 (Bd. Pat. App. & Int. 1993) (“At
best, the examiner’s comments regarding obviousness amount to an assertion that one of ordinary skill in
the relevant art would have been able to arrive at appellant’s invention because he had the necessary
skills to carry out the requisite process steps. This is an inappropriate standard for obviousness. . . .
That which is within the capabilities of one skilled in the art is not synonymous with obviousness. Ex
parte Gerlach, 212 USPQ 471 (Bd. App. 1980).”).
The examiner’s decision is reversed.
Reversed
CHARLES F. WARREN )
Administrative Patent Judge )
)
)
)
ROMULO H. DELMENDO ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
- 4 -
Page: Previous 1 2 3 4 5 Next
Last modified: November 3, 2007