Appeal No. 1997-1122 Page 7
Application No. 08/170,177
noted fact "... cannot apply to an absorption mat" (brief,
page 11) and the claimed additional spaces limitation "...
places the applicant's invention even further out of the reach
of the person exercising only ordinary skill" (brief, page 9).
It is well settled that an allegation of obviousness
unsubstantiated by a factual basis upon which to establish the
prima facie obviousness of the claimed invention as a whole,
including each and every limitation of the claims is not
sufficient. See In re Fine, 837 F.2d 1071, 1075, 5 USPQ 1596,
1600 (Fed. Cir. 1988); In re Warner, 379 F.2d 1011, 1017, 154
USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1967).
Under the present circumstances, 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 combining the
references as proposed so as to arrive at the claimed
invention by: (1) substantially modifying the mat of Valley to
correspond to the mat at issue herein by using a significantly
different construction of elastomeric granulate or shavings,
and a binding means resistant to hydrocarbons; and (2)
providing additional spaces in such a substantially altered
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