Appeal 2007-3918
Application 10/203,926
vulcanization of the rubber causes the claimed volume fraction of the
expanded microspheres in the rubber.
Accordingly, based on the Appellants’ arguments at pages 12 and 13
of the Brief and above, we determine that the Examiner has not established a
prima facie case of unpatentability based on lack of an enabling disclosure in
the application disclosure for the subject matter recited in claims 13 and 14
within the meaning of 35 U.S.C. § 112, first paragraph.
OBVIOUSNESS
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 (e.g.,
unexpected results). 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 would be 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); see
also DyStar Textilfarben GmBH & Co. Deutschland KG v. C.H. Patrick Co.,
464 F.3d 1356, 1361, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006)(“The
motivation need not be found in the references sought to be combined, but
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