Appeal No. 2004-1178
Application No. 09/655,899
Accordingly, because Williams, Terada, Babcock ‘018, Babcock ‘365,
Patel ‘797, Patel ‘786 and JP’456, each individually, do not describe each
and every limitation of the appealed claims with sufficient specificity, we
cannot uphold the Examiner’s rejections under 35 U.S.C. § 102.
The Examiner’s rejections under § 103 fails for the same reasons
presented above. Specifically, each reference must have disclosure that
would have led a person of ordinary skill in the art to a polymer having a Tg
of less than about -40oC. The Examiner has not provided motivation for
selecting the proper combination of monomers, from each of the cited
references, to produce a polymer having a Tg of less than about -40 oC. The
mere fact that the proper combination of monomers could have been
selected from the references 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). The Examiner has not
adequately provided an explanation why the cited prior art would have
suggested to one of ordinary skill in the art the desirability of forming a joint
compound that comprises an emulsion polymer having a Tg of less than
about -40oC.
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