Appeal No. 95-4577
Application No. 08/001,192
coatings having thickness of a film of 50 microns" (answer,
page 7; emphasis added). The mere fact that patentee's
"composition can be applied" at a thickness of 50 microns is,
by itself, inadequate to establish obviousness. This is
because the capability of so modifying the prior art 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). In
this latter regard, the appellants are correct that the
Yoshimura reference would have militated against rather than
for such a thickness (e.g., see the last full paragraph in
column 1 and the paragraph bridging columns 1 and 2 of the
patent).
Finally, the examiner has failed to establish a prima
facie case with the respect to the cooking article feature of
appealed claim 29. While the examiner seems to appreciate
that claim 29 contains such a feature (see the second full
sentence on page 8 of the answer), he has offered no evidence
or reasoning in support of a conclusion that it would have
been obvious to so modify the subject matter of Yoshimura as
to result in a cooking article as required by the claim under
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