Appeal No. 1996-3472
Application 08/192,088
limitation is given weight in determining the patentability
would at least be obvious.” (Answer, page 4). When
determining the patentability of a claimed invention which
combines two known elements, “the question is whether there is
something in the prior art as a whole to suggest the
desirability, and thus the obviousness, of making the
combination.” Lindemann Maschinenfabrik GMBH v. American
Hoist & Derrick Co., 730 F.2d
1452, 1462, 221 USPQ 481, 488 (Fed. Cir. 1984); see also In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999). The examiner has failed to show any suggestion,
motivation or reasoning to use sol-gel alumina abrasive grains
with the glass-ceramic product of Clark. The examiner has not
taken official notice, used appellants’ admissions in the
specification, or employed Cottringer to support the
conclusion of obviousness. The examiner has also failed to4
reply to appellants’ reliance on Rue as “teaching away” from
the claimed invention (see the Brief, page 7).
4See the Answer, page 4, where the examiner explicitly
states that Cottringer is not used in the rejection.
6
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