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Ex Parte Patel et al - Page 13
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Board of Patent Appeals and Interferences > 2006 > Ex Parte Patel et al - Page 13
Appeal No. 2006-3310 Page 13
Application No. 10/282,424
matter with which it deals, logically would have commended itself to an
inventor's attention in considering his problem. . . . If a reference
disclosure has the same purpose as the claimed invention, the reference
relates to the same problem, and that fact supports use of that reference
in an obviousness rejection. . . . If it is directed to a
different purpose, the inventor would accordingly have had less motivation
or occasion to consider it.
Clay, 966 F.2d at 659, 23 USPQ2d at 1061.
According to the instant specification, “there is a need in the art for a non-
flowable anti-seize formulation having dimensional stability up to and exceeding 120°F
so that it may be used in a variety of industrial settings.” Specification [0007]. WO ‘628
is also concerned with non-flowability, but in the context of an adhesive and sealant. In
our view, a person of ordinary skill in the art would not have reasonably considered a
polymeric matrix utilized to make an adhesive non-flowable applicable to solving the
problem of making a lubricant non-flowable. In making the adhesive for threadlocking,
the skilled artisan would not have worried that the polymeric matrix might cause the
threads to seize since the final purpose is to lock the parts together. In contrast, this
would have been a major concern of the skilled worker in making an anti-seize
composition. Accordingly, we do not find that prima facie obviousness has been
established for claims 22 and 23. This rejection is reversed.
Summary
The rejections of claims 1-6, 8-21, and 24 are affirmed. The rejection of claims
22 and 23 over prior art is reversed.
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Last modified: November 3, 2007
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