Appeal No. 96-4193
Application No. 08/267,049
of “refined cellulose fibers”. The term “modified cellulose”
is well known in the art and has not been shown by the3
examiner to necessarily include the “refined cellulose fibers”
taught in appellant’s specification and recited in appealed
claim 1.
Even assuming that “modified cellulose fibers” are the
same as “refined cellulose fibers”, the examiner has failed to
show any reasoning, motivation or suggestion for combining the
teachings of Takemae and Vogt in the manner proposed (see the
Brief, pages 11-12). The examiner must specifically identify
the reasons one of ordinary skill in the art would have been
motivated to select the references and combine them. See In
re Dembiczak, __ F.3d __, __, 50 USPQ2d 1614, 1617-1618 (Fed.
Cir. 1999); In re Rouffet, 149 F.3d 1350, 1359, 47 USPQ2d
1453, 1459 (Fed. Cir. 1998). The examiner sets forth a
sweeping rationale that it would have been obvious to make a
disc liner with regenerated and refined cellulose fibers “to
avoid scratching disc surface in order to protect disc surface
3See Hawley, The Condensed Chemical Dictionary, 10th ed.,
pp. 210-211, Van Nostrand Reinhold Co., 1981, a copy of which
is attached to this decision.
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