Appeal No. 2002-1409
Application 09/381,444
the claimed invention as a whole, including each and every limitation of the claims, without
recourse to the teachings in appellant’s disclosure. See generally, In re Rouffet, 149 F.3d 1350,
1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); 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 469,
473, 5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988). The requirement for objective factual
underpinnings for a rejection under § 103(a) extends to the determination of whether the
references can be combined. See In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433-34
(Fed. Cir. 2002), and cases cited therein.
On this record, we must agree with appellant (e.g., reply brief, page 11, first full
paragraph) that the examiner has not made out a prima facie case of obviousness with respect to
the claimed invention. We find that Model would have reasonably suggested to one of ordinary
skill in this art3 that “4,2’,4’-trichloro-2-hydroxy-diphenyl ether,” which is specified in the
appealed claims as “2,4, 4’-trichloro-2’-hydroxy-diphenyl ether” and is also known commercially
as IrgasanŽ DP 300 and Triclosan, can be used to impart antimicrobial properties to molded
plastic articles, including those prepared by injection molding (e.g., col. 1, lines 15-36; col. 4,
lines 24-35; col. 6, lines 27-39; col. 18, lines 21 and 27; and Examples X through XII;
specification, page 3, first full paragraph). Similarly, we find that Dubin would have reasonably
suggested to one of ordinary skill in this art that 2,2’-thiobis (4,6-dichlorophenol) and
2,2’methylenebis-(3,4,6-trichloro) phenol, which are specified in the appealed claims as
3,5,3’,5’-tetrachloro-2,2’-dihydroxydiphenyl sulfide and 3,5,6,3’,5’,6’-hexachloro-2,2’-
dihydroxydiphenylmethane, respectively, can be used to impart antimicrobial properties to
molded articles, including those prepared by extrusion, and indeed, used “for the production of
any item on which micro-organisms might be passed or where they come in contact with the
surface of the plastic material” (e.g., col. 1, lines 18-30 and 46-69; col. 2, lines 17-23; col. 2, line
2 Answer, pages 3-5.
3 It is well settled that a reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in this art would have reasonably been expected to draw
therefrom, see generally, In re Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed.
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