Appeal No. 95-4036
Application No. 08/137,332
would be prima facie obvious to utilize the styrene
monomers of Gunesin in combination with the
butadiene monomers of Markle and copolymerize them
together as instantly claimed.
We disagree. Neither Gunesin nor Markle disclose or suggest a
continuous dispersion polymerization process for producing the
copolymers of appellants’ claimed invention (Brief, p.7).
Without the benefit of appellants’ disclosure there would have
been no motivation to combine the teachings of Gunesin and
Markle. See In re Bond, 910 F.2d 831, 834, 15 USPQ2d 1566,
1568 (Fed. Cir. 1990) citing Carella v. Starlight Archery and
Pro Line Co., 804 F.2d 135, 140, 231 USPQ 644, 647 (Fed. Cir.
1986) (“[o]bviousness cannot be established by combining the
teachings of the prior art to produce the claimed invention,
absent some teaching, suggestion or incentive supporting the
combination”); In re Gorman, 933 F.2d 982, 987, 18 USPQ2d
1885, 1888 (Fed. Cir. 1991) (in a determination under 35
U.S.C. § 103 it is impermissible to simply engage in a
hindsight reconstruction of the claimed invention, using the
applicant’s structure as a template and selecting elements
from references to fill the gaps; the references themselves
must provide some teaching whereby the applicant’s combination
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