Appeal No. 1996-2239 Page 9
Application No. 08/037,485
Either the amino-carboxylates are mixed with polymeric material
or sprayed thereon.
Similarly, Andersen contains no suggestion of including a
polymeric binder. Accordingly, the references neither
disclose, nor teach a coating composition containing a
polymeric binder as required by the claimed subject matter.
Therefore, we are constrained to agree with appellants
that the examiner has failed to establish a prima facie case of
obviousness. The examiner has not provided any evidence or
scientific explanation on this record why one of ordinary skill
in the art would have found in the disclosure of the combined
teachings of Stephen and Andersen a suggestion to prepare a
coating composition using amino-carboxylates and polymeric
binder. The examiner must show reasons that the skilled
artisan, confronted with the same problems as the inventor and
with no knowledge of the claimed invention, would select the
elements from the cited prior art references for combination in
the manner claimed. We determine that there is no reason,
suggestion, or motivation to combine the references in the
manner proposed by the examiner. Accordingly, the examiner has
not established a prima facie case of obviousness. See In re
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