Appeal No. 1997-1807
Application No. 08/395,248
how any such proposed modification would have resulted in the
claimed method or a product blend coating corresponding to
appellant's coating. We specifically note that the examiner
has not offered any other basis in the answer for explaining
how the applied references may have rendered the product-by-
process claims 11 and 15 unpatentable.
Additionally, the examiner has not convincingly explained
in the answer where the motivation may be found in the
combined teachings of the references to support the notion of
"function equivalently" as a basis for modifying Calhoun as
proposed. In this regard, we note that the showing of the
teaching or motivation to combine prior art references must be
clear and particular. See In re Dembiczak, 175 F.3d 994, 999,
50 USPQ2d 1614, 1617 (Fed. Cir. 1999). Here, the examiner has
failed to point to convincing evidence of a suggestion from
the prior art, the knowledge of one of ordinary skill in the
art, or the nature of the problem itself. See In re
Dembiczak, supra.
For the foregoing reasons and those set forth in
appellant's brief, we determine that the examiner has not
Page 6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007