Appeal No. 1996-0575
Application No. 08/219,551
[i]t is also true that it is within the scope of one's expertise to alter this range
as per one's specific requirements. Examiner is of the opinion that the melt
viscosity of the composition can be varied. ...the melt viscosity may be
varied by changing the proportions of the two resins that make up the
composition.
o
While it may be true that the average melt viscosity at 180 C at a shear rate of 10,000 Hz
could be altered or modified in the manner suggested by the examiner, the examiner has
provided no evidence or facts which would have reasonably suggested or motivated one of
ordinary skill in this art to so modify the specific compositions disclosed by Pettit. To
support such a modification of the prior art, there must be some reason, suggestion, or
motivation found in the prior art, explicitly or implicitly, whereby a person of ordinary skill in
the field of the invention would make the modification required. That knowledge can not
come from the applicants' invention itself. Diversitech Corp. v. Century Steps, Inc., 850
F.2d 675, 678-79, 7 USPQ2d 1315, 1318 (Fed. Cir. 1988); In re Geiger, 815 F.2d 686,
688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987); Interconnect Planning Corp. v. Feil, 774
F.2d 1132, 1143, 227 USPQ 543, 551 (Fed. Cir. 1985). We find no reasonable
suggestion, motivation, or direction in the prior art relied upon by the examiner, which
would have lead one of ordinary skill in this art to modify the resin paint compositions of
Pettit to arrive at a paint composition having the specified average Tg and viscosity
required by the claims.
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