Appeal No. 95-3686
Application No. 08/034,794
DISCUSSION
We have no doubt that a person having ordinary skill in
the art could have modified the laminate of Hughes by (1)
selecting sodium benzoate as a nucleating agent in one of the
polypropylene films therein; (2) using "up to 1000 ppm" sodium
benzoate in the polypropylene film; and (3) mono-axially
orienting the laminated product. This is apparent from a
review of applicant's specification and claims. However, the
mere fact that the prior art could be so modified would not
have made the modification obvious unless the prior art
suggested the desirability of the modification. In re Gordon,
733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
We have carefully considered the Hughes reference in its
entirety, and what the reference fairly teaches to one of
ordi-nary skill in the art. On reflection, we find that
Hughes does not provide adequate guidelines which would have
led a person having ordinary skill from "here to there," i.e.,
from the Hughes laminate to the claimed mono-axially oriented
polypropylene film containing sodium benzoate "wherein the
sodium benzoate ranges up to 1000 ppm." Nor has the examiner
established, on this record, that Hughes provides adequate
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