Appeal No. 1996-1716
Application No. 08/344,532
page 10, second paragraph). To remedy this failing, the
examiner applies the secondary references (Nishikawa, Tanaka,
and Aharoni) to “teach the preparation of hydroxyl-functional
polyesters utilizing a dicarboxylic acid with an appended
alkyl group such as octadecysuccinic [sic, octadecylsuccinic]
acid.” (Answer, page 5). The examiner reiterates that the
secondary “references are relied upon merely to teach the
conventional use of such a dicarboxylic acid in the formation
of a hydroxyl-functional polyester” (Answer, page 6).
We determine that the examiner has failed to present
evidence of a suggestion, teaching or motivation to combine
the references as proposed. In re Dembiczak, 175 F.3d 994,
999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999); In re Rouffet, 149
F.3d 1350, 1356, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998).
Whether the evidence of a teaching or suggestion to combine
comes from the references themselves, the knowledge of one of
ordinary skill in the art, or from the nature of the problem
to be solved, the showing of evidence must be clear and
particular. Dembiczak, 175 F.3d at 999, 50 USPQ2d at 1617.
The primary references are directed to adhesive compositions
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