Appeal No. 94-0995
Application No. 07/662,722
having ordinary skill have used hydroxylated silicone resin in
lieu of acyloxy or alkoxy-functional silicone resin in the
composition of Grape? As stated in In re Gordon, 733 F.2d
900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984):
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. [Citations
omitted].
In the Final Rejection, the examiner did not point to any
portion or portions of Grape or the acknowledged state of the
prior art which would have suggested the desirability of the
proposed modification of Grape's component (B). For this
reason, the rejection of claims 1 through 14 under 35 U.S.C.
§ 103 as unpatentable over Grape alone was flawed.
In the Appeal Brief (Paper No. 13), appellants espouse
the very argument outlined above, namely, that the prior art
relied on by the examiner does not suggest the desirability of
the proposed modification of Grape's composition. Appellants
also rely on the Favre and Blizzard patents which, according
to appellants, teach away from the claimed invention.
Appellants argue that each of Favre and Blizzard discloses
component (B) of claim 1, the hydroxylated silicone resin, in
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