Appeal No. 1996-2472
Application 08/075,297
speculation, and such speculation is not a sufficient basis
for a prima facie case of obviousness. See In re Warner, 379
F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied,
389 U.S. 1057 (1968); In re Sporck, 301 F.2d 686, 690, 133
USPQ 360, 364 (CCPA 1962). In order for a prima
facie case of obviousness to be established, the teachings
from the prior art itself must appear to have suggested the
claimed subject matter to one of ordinary skill in the art.
See In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147
(CCPA 1976). The mere fact that the prior art could be
modified as proposed by the examiner is not sufficient to
establish a prima facie case of obviousness. See In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir.
1992). The examiner must explain why the prior art would have
suggested to one of ordinary skill in the art the desirability
of the modification. See Fritch, 972 F.2d at 1266, 23 USPQ2d
at 1783-84. The examiner has not provided such an
explanation. Consequently, we do not sustain the examiner’s
an aqueous urethane dispersion.
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