Ex parte EDWARDS et al. - Page 7

              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                                 
              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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