Appeal No. 94-3121
Application 07/853,868
“desired” encapsulation of the curing agent of those compositions as suggested by the general
teaching of Bentov et al. Indeed, the curing of the phenoxy based “structural” resin adhesive
compositions under the pressure and temperature conditions recited in Fujiwara et al. would not
have suggested a “desire” to one of ordinary skill in this art to encapsulate the curing agent in
order to control the curing reaction in forming a laminated circuit board. The teachings of
Fujiwara would further not have reasonably suggested to one of ordinary skill in this art that such
an adhesive composition would have been suitable for use in place of the simpler epoxy resin
adhesive compositions of Hatada and Schmidt et al. which do not contain a further resin or a
curing agent and are used under different pressure and curing conditions in a different manner for
a different purpose. The examiner has not brought forward any evidence of other knowledge in
this art area or set forth any scientific reasoning which would at least prima facie establish why
one of ordinary skill in the art would have been motivated to modify the teachings of Hatada and
Schmidt et al. to arrive at appellants’ invention. Indeed, mere “agreement” between disclosures in
appellants’ specification and disclosures found in the prior art does not accomplish this purpose.
See, e.g., Warner, supra. Furthermore, even if the adhesive composition of Fujiwara et al. were
modified by encapsulating the curing agent thereof, the use of such compositions in the processes
of Hatada and Schmidt et al. would not have resulted in the claimed processes since there is no
teaching or suggestion in these references to use the adhesive compositions thereof under the
conditions of temperature and pressure necessary to achieve the cure rate as specified in the
appealed claims. See, e.g. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1050-53, 5
USPQ2d 1434, 1438-40 (Fed. Cir. 1988). Accordingly, the record before us supports the
inference that the examiner has relied on information gleaned from appellants’ disclosure in
formulating the grounds of rejection on appeal. Dow Chemical, supra; Warner, supra.
The examiner’s decision is reversed.
Reversed
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