Appeal No. 1996-3942 Page 7
Application No. 08/095,306
nonloading coating for sandpaper (column 2, lines 25-30). The
nonloading coating also includes soap, solvent and filler
(column 1, line 61 to column 2, line 14). Among the choices
for a compatible resin that may be used in conjunction with
the thermosetting resin, Rinker lists thermoplastic resins
made from vinyl ethers. The examiner reasons, in effect, that
since Rinker and Tumey are from the same field of endeavor, it
would have been obvious for one of ordinary skill in the art
to use the vinyl ethers of Rinker in Tumey "... in place of
the generic ether
group-containing ethylenic compounds of US-832 ... with the
expectation of producing an improved coated abrasive article
as taught in US-150" (answer, page 4).
Manifestly, the examiner's stated rejection falls short
of presenting a prima facie case of obviousness. The mere
fact that the prior art could be modified as proposed by the
examiner is not sufficient to establish a prima facie case.
See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783
(Fed. Cir. 1992). The suggestion for the proposed
modification must be in the prior art, and not in the
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