Appeal 2006-2774
Application 10/309,493
Examiner is not using the Appellant’s application as a blueprint. Erismann
contains a description of all classes of components recited in the claimed
invention.
We also agree with the Examiner’s conclusion that it would have been
obvious to have picked the specific compounds recited in claim 1(a), (g),
and (i). Obviousness requires a teaching that all elements of the claimed
invention are found in the prior art and “a reason that would have prompted
a person of ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does” KSR Int’l Co. v. Teleflex Inc., 127 S.
Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007). In this case, the Examiner
has provided logical reasons to explain why a person of ordinary skill in the
art would have chosen Triton X-45 as the surfactant of (g) and Surfynol
DF58 as the defoamer of (i) (Answer 5; see supra at p. 8-9). Thus, we
conclude that the Examiner provided sufficient evidence to establish prima
facie obviousness of claim 1.
Appellant contends that Nienaber’s teaching of Surfynol DF58 and
Nee’s teaching of Triton X-45 “do not seem to help the Examiner’s rejection
much since Nienaber seeks to make a correction tape and Gee seeks to make
a polyorganosiloxane emulsion having small particle sizes” (Br. 11). We are
not persuaded. The Examiner relies on Nienaber and Nee as evidence of the
chemical properties of the named compounds, not the particular use to which
they are put. As evidenced by Nienaber, these properties, as well as the
interchangeability of the compounds, were known.
Appellant asserts that “[n]either of Claim 1 elements (a) [char forming
material] nor (b) [char reinforcement material] are disclosed by Erismann
and certainly not disclosed in combination to form the approach of
10
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: September 9, 2013