Appeal 2007-2082
Application 10/795,457
col. 4, l. 65-col. 5, l. 11; col. 12, ll. 36-44; Table II, Group (D), 1a;
and col. 15, ll. 66-75); and
(4) Hoshino discloses a mortar material including gypsum kneaded
with 0.1-20 parts by weight of a fluororesin fibrillating polymer
such as PTFE, with water kneaded into the mortar material to
produce a hardened material (claims 1-3, p. 2; p. 3, third full
paragraph; p. 6, l. 18; p. 7, last full paragraph; and Example 2 on
p. 10).
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of (1) the scope and content of the prior art; (2) the differences
between the claimed subject matter and the prior art; (3) the level of ordinary
skill in the art; and (4) secondary considerations. See Graham v. John Deere
Co. of Kansas City, 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
“[A]nalysis [of whether the subject matter of a claim is obvious] need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR Int’l Co.
v. Teleflex, Inc., 127 S. Ct. 1727, 1740-41, 82 USPQ2d 1385, 1396 (2007),
quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336-37 (Fed.
Cir. 2006). The analysis supporting obviousness, however, should be made
explicit and should “identify a reason that would have prompted a person of
ordinary skill in the art to combine the elements” in the manner claimed.
KSR, 127 S. Ct. at 1731, 82 USPQ2d at 1389.
Applying the preceding legal principles to the factual findings in the
record of this appeal, we determine that the Examiner has established a
prima facie case of obviousness, which prima facie case has not been
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