Appeal No. 1997-1161
Application 08/487,226
polydiorganosiloxane to a fire retardant composition improves
the properties of the composition.
In order for a prima facie case of obviousness to be
established, the teachings from the prior art itself must
appear to have suggested the claimed subject matter to one of
ordinary skill in the art. See In re Rinehart, 531 F.2d 1048,
1051, 189 USPQ 143, 147 (CCPA 1976). The mere fact that the
prior art could be modified as proposed by the examiner is not
sufficient to establish a prima facie case of obviousness.
See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783
(Fed. Cir. 1992). The examiner must explain why the prior art
would have suggested to one of ordinary skill in the art the
desirability of
the modification. See Fritch, 972 F.2d at 1266, 23 USPQ2d at
1783-84. The examiner has not provided such an explanation
and, therefore, has not established a prima facie case of
obviousness of the invention recited in any of appellant’s
claims. Accordingly, we reverse the rejection over Yusawa in
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007