Appeal No. 1999-1186
Application 08/440,366
The examiner argues that it would have been obvious to one
of ordinary skill in the art to blend at least 5 wt% EBAC with
EMAC in order to provide enhanced impact strength (answer,
pages 6-7).
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). Batchelor discloses obtaining high
impact strength by use of a copolymer which can contain methyl
acrylate and ethyl acrylate units (page 2, lines 37-39; page 3,
lines 110-112). The examiner has not explained why the applied
prior art itself would have led one of ordinary skill in the art
to change from this copolymer to a blend of EMAC and EBAC
copolymers. The record indicates that the motivation relied upon
by the examiner for doing so comes from the appellants’
description of their invention in the specification rather than
coming from the applied prior art and that, therefore, the
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