Appeal No. 1996-0098
Application No. 08/207,512
conclusion that the claimed subject matter is prima facie
obvious must be supported by evidence, as shown by some
objective teaching in the prior art or by knowledge generally
available to one of ordinary skill in the art that would have
led that individual to combine the relevant teachings of the
references to arrive at the claimed invention. See In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988).
Appellant argues (Brief, pages 3-15) that the subject
matter defined by the appealed claims cannot be found in the
applied references. We agree. A pivotal flaw in all of the
examiner's rejections is that none of the references relied
upon teach or suggest the claimed bimodal particle size
distribution of the boron nitride powder component utilized in
appellant's grease composition.
Regarding the rejection utilizing Hong as the sole
evidence of obviousness relied upon, the examiner urges that
the claimed bimodal size distribution of the boron nitride
would have been "within the broad teachings of Hong..." in
that "[t]he boron nitride taught by Hong has a particle size
of about one micron" (Answer, page 4). However, we agree with
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