Appeal No. 1996-3292
Application 07/991,467
The Herring patent, which the examiner characterizes as "cumulative", does disclose quartz as a
filler (reinforcing material), and lists rocket motor insulating compositions having 20% silica (the
examiner notes Table 1, Example E). However, it is fundamental that under
§ 103, references can be combined only if there is some suggestion or incentive to do so. ACS
Hospital Sys., Inc. v. Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir.
1984). In order to combine Daume with Marion and/or Herring, one of ordinary skill would have to
ignore Daume's disclosure that there should be "the largest possible proportion" of filler, and the
showing in Tables I and II that in general a reduction of filler (cooling agent) below 60% causes
increased smoke. We do not find any suggestion or incentive in Marion or Herring for so modifying
Daume, and believe that any such suggestion would be based upon impermissible hindsight gleaned
from appellants' disclosure, rather than from the prior art.
Graham, the other secondary reference applied, does not supply the deficiency discussed
above.
We therefore will not sustain rejection (2).
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