Appeal No. 1996-4071 Page 8
Application No. 08/292,692
art and that "... the cited art simply provides no motivation
to add this feature...." We agree. Under the present
circumstances and in the absence of the examiner citing
particular prior art reference(s) teaching this officially
noticed fact in particularized molding embodiments and
processes, we can not agree that the examiner has met the
burden of establishing that a skilled artisan would have been
imbued with both a suggestion and reasonable expectation of
success in using such a coating in a molding step of JP ‘817
or JP ‘824 that has additionally been modified to correspond
to the intermediate molding step claimed herein. Moreover,
absent a particularized embodiment displaying the officially
noticed coating being cited, we can not reasonably determine
that the coating that is urged to be well known by the
examiner would necessarily correspond to appellant’s claimed
"means..." as urged by appellant (brief, pages 7 and 8).
On this record and in light of the above discussion, we
determine that the examiner has failed to present sufficient
evidence of a suggestion, teaching or motivation to combine
the references as proposed so as to arrive at the claimed
invention with a reasonable expectation of success. See In re
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