Appeal No. 1996-3320 Page 8
Application No. 08/342,955
their composition as acknowledged by the examiner. We do not
find this general teaching of using an acrylate prepolymer in
Lucey sufficiently specific to suggest the use of an acrylate of
formula Ia or Ib as claimed herein in their composition
notwithstanding that Bagga may disclose a starting material
which could have been used for making such a compound. The
evidentiary record furnished by the examiner does not suggest
any convincing reason(s) to acrylate the epoxide of Bagga for
use as a component in the composition of Lucey.
The Flynn and Nawata references are additionally relied
upon by the examiner to support the examiner's viewpoint
regarding the obviousness of using a mixture of monomer
components in the composition of Lucey, but do not cure the
above-noted deficiency in the examiner's rejection.
The mere fact that the prior art may be modified to
reflect features of the claimed invention does not make the
modification obvious unless the desirability of such
modification is suggested by the prior art. The claimed
invention cannot be used as an instruction manual or template to
piece together the teachings of the prior art so that the
claimed invention is rendered obvious. See In re Fritch, 972
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007