Appeal No. 2006-3155
Application 09/682,749
a cycloaliphatic polyester. FF 3. Therefore, the Examiner properly
concluded that the intermediate layer may be a cycloaliphatic polyester.
Appellants point out that MacGregor indicates a preference for using a
blend of cycloaliphatic polyester and polycarbonate in the upper layer. This
argument is not persuasive since a reference must be evaluated for all that it
fairly teaches and not only for what is indicated as preferred. See In re
Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969). In this
case, MacGregor clearly teaches an upper layer which may be a
cycloaliphatic polyester and/or a polycarbonate, a UV-stabilizer and
hindered amine light stabilizer as claimed. Answer 3, 6-7; FF 1, 7, 8.
Appellants assert that the Examiner has not explained the motivation
for selecting the various layers to achieve the claimed structure. In our view,
the Examiner’s rationale for selecting a cycloaliphatic polyester for both the
intermediate and upper layers is reasonable and properly based on
MacGregor’s explicit disclosure of using a cycloaliphatic polyester for the
individual layers and the Examiner’s determination that such structure would
improve weatherability and solvent resistance (Answer 4; FF 6). See In re
Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991).
Appellants also argue that the Examiner’s proposed modification of
MacGregor to include a mixture of UV absorber and HALS compound as
taught by Susi is based on improper hindsight reasoning. Answer 5-6.
Contrary to Appellants, we find that the Examiner has properly identified
motivation, in the prior art, for combining the teachings of the references
(see Answer 5).
Appellants attempt to overcome the Examiner’s prima facie showing
of obviousness through evidence of unexpected results. According to
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