Appeal No. 2006-2413 Page 17
Application No. 10/250,412
As stated in In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313, 1316 (Fed.
Cir. 2000) (citation omitted), “identification in the prior art of each individual part claimed
is insufficient to defeat patentability of the whole claimed invention. Rather, to establish
obviousness based on a combination of the elements disclosed in the prior art, there
must be some motivation, suggestion or teaching of the desirability of making the
specific combination that was made by the applicant.”
The examiner has not adequately explained why a skilled worker preparing
Pomerhn’s cementitious sheets would have prepared the sheet-making mixture in the
spraying apparatus recited in claims 55 and 56, rather than using the sheet-making
machines disclosed by Pomerhn (column 1, lines 7-16). Reviewing the references, we
do not see and the examiner does not point to anything suggesting that the sheet-
making cementitious mixture in Pomerhn should be prepared in the spraying apparatus
recited in claims 55 and 56.
Because the examiner has not shown that the teachings of Pomerhn and Burge
would have led a skilled worker to prepare the aqueous cementitious compositions of
Pomerhn in a compressed gas spraying apparatus, the examiner has not established
that claims 55 and 56 are prima facie obvious in view of those references. We therefore
reverse the obviousness rejection of claims 55 and 56 over Pomerhn, even when
viewed in light of Burge.
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