Appeal No. 1997-2384 Page 6
Application No. 08/430,083
claimed coating process (answer, page 2). In an attempt to
remedy this acknowledged deficiency, the examiner additionally
relies on the teachings of Mosbach.
According to the examiner (answer, page 3),
It would have been obvious to one of ordinary
skill in the art at the time the invention was made
to include dimers (uretdione) in Coogan’s
dispersible binder composition because Mosbach shows
this as a way of making films, that upon heating,
further cure to yield films having higher hardness
values (col. 7, line 20) because the dimers can
provide additional crosslinking (col. 5, line 31).
The examiner further states (answer, page 3):
The examiner’s position is that Mosbach provides
motivation for modifying Coogan, and that appellants
[sic] results aren’t unexpected because Mosbach
teaches more crosslinking, which would improve the
properties.
However, on this record, we disagree with the examiner’s
views on this matter. At the outset, we note that “[b]efore
the PTO may combine the disclosures of two or more references
in order to establish prima facie obviousness, there must be
some suggestion for doing so, found either in the references
themselves, or in the knowledge generally available to one of
ordinary skill in the art.” In re Jones, 958 F.2d 347, 350,
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