Appeal No. 96-4158
Application No. 08/404,242
. . . since the curable material of Blott as well as
the softenable material of Laufenberg could be
activated in less than 30 seconds contact with water
that [sic, then?] the claimed dissolve time is
obvious in view thereof. In other words, the
dissolve time of less than 30 seconds logically
flows from the fact that the softenable material of
Laufenberg would be softened in less than 30
seconds. [Answer, page 6]
The difficulty with the examiner’s position as quoted
supra is that it is based on speculation. Obviousness,
however, may not be based on speculation or what could have
been done. See In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984). Instead, a prima facie case of
obviousness 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. In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed Cir. 1988). The
speculation that Laufenberg’s thermoplastic material “could be
activated in less than 30 seconds” is not tantamount to a
teaching or a suggestion of dissolving the liner in less than
30 seconds. Accordingly, we cannot sustain the examiner’s §
103 rejection of claim 27.
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