Appeal No. 1996-3306
Application No. 08/145,380
invention from the prior art disclosure. "When prior art references require selective
combination by the court to render obvious a subsequent invention, there must be some
reason for the combination other than the hindsight gleaned from the invention itself."
Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed.
Cir. ), cert. Denied, 488 U.S. 825 (1988). Since the only reason for selecting the claimed
components and combining them as claimed is provided by the specification, we conclude
that a prima facie case of obviousness of the claims over Anzini has not been established.
We note that the rejection is also formulated as being over Anzini in view of Mack.
Mack discloses a blow molding resin composition comprising a low molecular and
a high molecular weight component polyethylene where an organic peroxide is used to
lightly branch the composition to impart improved processing properties to the
composition. Like Anzini, a myriad of possible polyethylenes are disclosed and there is no
suggestion to select those specified in the claims or that they be combined with an organic
peroxide in the manner and order claimed. Accordingly, with respect to the claimed
polyethylene components and their combination, Mack does not strengthen examiner's
prima facie case of obviousness.
Mack is cited solely because "it teaches that it would be preferable to use less than
100 ppm peroxide to provide improvement in processability by reducing flare swell and die
swell of the treated component (abs)" (examiner's answer, p. 4). This would apply only to
claims 13-16. The other claims allow for higher levels of peroxide. Why Mack has been
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