Appeal No. 2006-2810 Page 7
Application No. 10/618,111
the references. The test for an implicit showing is what the combined teachings,
knowledge of one of ordinary skill in the art, and the nature of the problem to be solved
as a whole would have suggested to those of ordinary skill in the art.” In re Kahn, 441
F.3d 977, 987-988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). While Cook does not
expressly state that carboxylate-alumoxane can be combined with LCTs, his message
is clear: carboxylate-alumoxane fillers can be used to circumvent the structural
problems observed with unfilled polymers. We view this as a strong motivational
teaching, irrespective of the specific type of epoxy polymer.
Smith solidifies the motivation. On column 6, line 37-39, Smith states that
“[f]urther embodiments of the invention are modified to lower costs and improve
flexibility and other properties of LCT.” Cook explicitly suggests a modification (i.e.,
carboxylate-alumoxane) that improves brittleness (i.e., “flexibility”), a deficiency
acknowledged in Smith. Cook, Id., column 1, lines 51-57; column 13, line 55-column
14, line 31; column 17, lines 38-54. Combined, we are in agreement with the examiner
that the skilled worker would have been motivated to modify the Smith’s LCT resin with
Cook’s teachings.
In setting forth the rejection, the examiner relied in part on Cook’s disclosures
that its methods could be applied to “any commercially available epoxy resin.” The
examiner asserted this suggested Smith’s LCT-epoxy resin. Appellant contended that
Cook’s statement was not enabling. Brief, Page 4, i.
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