Appeal No. 95-1211
Application 07/887,904
1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989).
We are mindful that it is well settled that the combination of references taken as a whole must
provide the suggestion or motivation to one of ordinary skill in the art to make the selection of elements
necessary to arrive at the claimed invention without recourse to appellants’ specification, with
[t]he extent to which such suggestion must be explicit in, or may be fairly inferred from, the
reference, is decided on the facts of each case, in light of the prior art and its relationship to
the applicant’s invention.
In re Gorman, 933 F.2d 982, 986-87, 18 USPQ2d 1885, 1888-89 (Fed. Cir. 1991); see also In
re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991); In re Sovish, 769 F.2d
738, 742-43, 226 USPQ 771, 773-74 (Fed. Cir. 1985); In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981); In re Warner, 379 F.2d 1011, 1014-17, 154 USPQ 173, 175-78
(CCPA 1967), cert. denied, 389 U.S. 1057 (1968). Accordingly, we are of the opinion that based on
the evidence presented in the references as we outlined above, one of ordinary skill in this art would
have been motivated to address the art recognized problem of the extraction of stabilizers by
hydrocarbon cable filler grease from polyolefin mixtures by employing hindered amine amic acid
hydrazides as disclosed by MacLeay with polyolefins used to insulate electrical conductors with the
reasonable expectation of successfully providing thermal and oxidative stabilization to these polyolefin
systems, which are normally subject to thermal and oxidative degradation, and resisting antioxidant
extraction from such systems. We are reinforced in our view since Turbett teaches that hindered
phenols with hydrazide functionality and other hindered phenols are used as stabilizers in polyolefins
systems and are compatible with filler grease. See In re O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d
1673, 1680-81 (Fed. Cir. 1988). Thus, the article of manufacture set forth in appealed claim 1 was
prima facie within the ordinary skill in this art at the time it was made.
With respect to appealed claim 17, we recognize that the hindered amine amic acid hydrazide
stabilizer of MacLeay Example XXIV is the species specified in appealed claim 16, and is “antioxidant
A” of specification Examples 2-4 (pages 16-20). However, while MacLeay teaches that the hindered
amine amic acid hydrazide stabilizers may be used with other additives including hindered phenolic and
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