Appeal No. 2005-1451 Page 5
Application No. 09/833,546
As neither Sakakibara nor the Handbook of Thermoset Plastics is relied upon by the
Examiner in a manner that cures the deficiencies of Fuller, we need not discuss those references
here. We conclude that the Examiner has failed to establish a prima facie case of obviousness
with respect to the subject matter of claims 1 and 3-25.
The above being said, the specification indicates that alcohol-soluble polyamides were
commercially available under the tradenames Luckamide® 5003 (Dia Nippon Ink), CM4000®
and CM8000® (Toray Industries, Ltd.), and Nylon® 8 (specification, p. 16, ll. 17-20). The
commercial purposes for which these materials were sold at the time of the invention is relevant
to the patentability of the subject matter on appeal, but such information is not of record. An
important question is whether the conventional uses known at the time of the invention would
have suggested to one of ordinary skill in the art the selection of the commercially available
alcohol-soluble polyamides for use in the polyamide strip of Parker. To answer that question,
documentation as to the conventional uses at the time of invention is required. We hereby
remand the application to the Examiner to allow the Examiner to perform the relevant search for
such documentation and, if the Examiner finds it appropriate, to direct a requirement for
information under 37 CFR § 1.105 to Appellants regarding documentation of commercial uses
known to them of alcohol-soluble polyamides discussed in their specification. Such documents
would include product data sheets, trade catalogs, and advertising materials. We remand to
further allow the Examiner to perform the appropriate review of all the evidence and to act
accordingly in light of that evidence.
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