Ex parte THOMAS R. OAKES, et al. - Page 9

          Appeal No. 95-3977                                                           
          Application 08/004,075                                                       

          combinations of peroxy acids as claimed over the individual                  
          peroxy acids of the prior art.  According to appellants, these               
          results are unexpected.                                                      
               The examiner attempts to rebut the showing in Table II by               
          noting that “Herting teaches synergy” and “no synergistic effect             
          is claimed” (emphasis examiner’s, see the answer, page 9).                   
          However, Herting only relates to the synergy of certain                      
          carboxylic acids, not peroxy carboxylic acids, and is not                    
          directed to the particular combination here claimed.  There is no            
          evidence of the equivalence of carboxylic and peroxy carboxylic              
          acids.  Therefore, the results achieved by the carboxylic acid in            
          Herting are not predictive of the results that can be attained by            
          the here claimed peroxy carboxylic acid combination.  Finally,               
          there is no requirement that a “synergistic effect” has to be                
               Weighing the combined teachings of the cited prior art and              
          the objective evidence of nonobviousness together, we must                   
          conclude that the claimed subject matter as a whole would not                
          have been obvious to a person of ordinary skill in the field of              
          the invention.  See Applied Materials Inc. v. Advanced                       
          Semiconductor Materials, 98 F.3d 1563, 1570, 40 USPQ2d 1481, 1486            
          (Fed. Cir. 1996); In re Hedges, 783 F.2d 1038, 1039, 228 USPQ                


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