Appeal No. 96-0071
Application 08/306,437
sustain the ground of rejection of the appealed claims under 35 U.S.C. § 103 over Hirai. We agree 3
with the examiner that, prima facie, one of ordinary skill in this art following the teachings of Hirai
would have reasonably combined a polytetrafluoroethylene (PTFE) having a three dimensional network
structure forming ability, as represented by the tradenames “Teflon 6J” and “Teflon 7J”, and a
granulated PTFE, as represented by the tradenames “Rublon L-2” and “Rublon L-5”, together in an
amount as specified in Hirai for the PTFE ingredient, with other ingredients as specified by the
reference, with the reasonable expectation of forming a sulfide polymer composition for a sliding
member as taught in the reference. Indeed, as pointed out by the examiner (answer, pages 3-4), one4
of ordinary skill in this art would have been motivated to combined two materials that are disclosed in
the art to be used for the same purpose with the reasonable expectation that the resulting composition
would have the same or similar properties. See, e.g., Merck & Co. v. Biocraft Labs, Inc., 874 F.2d
804, 807-08, 10 USPQ2d 1843, 1845-47 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re
Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
As evidence of nonobviousness, appellant presented a series of declarations under 37
CFR § 1.132 wherein the reported data demonstrates that the use of a combination of both types of5
PTFE in the amounts specified in the claims achieves results with respect to all of the physical
characteristics recited in the appealed claims that indeed differ from the results in the same properties
achieved with the use of either type of PTFE alone. We cannot agree with the examiner’s evaluation of
the evidence in the declarations. We find that while one of ordinary skill in this art would have
reasonably expected from the teachings of Hirai that a composition containing a combination of the two
types of PTFE in the amounts specified in the claims would have similar tensile strength and elongation
than would be the case for a composition containing “Rublon L-5” granulated PTFE alone, compare
3See page 2 of the answer. We refer in our opinion to the translation of Hirai provided by appellant in
the amendment of January 10, 1994 in the ‘554 application (Paper No. 6).
4We find that the two types of PTFE required by claims 13, 21 and 31 are defined in part in
appellant’s specification (pages 6-8) by the same tradenames used in Hirai (pages 3-4).
5The declarations were filed on January 10, 1994 and May 16, 1994 in the ‘554 application (Papers
No. 6 and 8) and on September 12, 1994 and January 9, 1995 (Papers No. 13 and 15).
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