Appeal No. 1997-2915
Application No. 08/087,227
The fatal deficiency of the examiner’s position is that
it is utterly devoid of evidentiary support. Indeed, on the
record of this appeal, no evidence at all has been proffered
by the examiner that the “striped in appearance” feature under
consideration was even available in the prior art. Stated
differently, the reference evidence adduced by the examiner
fails to support the proposition that the feature was
available in the prior art as a choice much less the
proposition that such a choice would have been obvious.
The rejection based upon the Guerra reference is further
defective in that, as indicated in the appellants’ brief, the
reference contains no teaching or suggestion of the here
claimed feature of a “textured” top layer. In rebuttal, the
examiner states “[i]t is the position of the Examiner that one
having ordinary skill in the art would be able to . . .
texturize the top acrylic layer [of Guerra] . . . depending on
the desired effect” (answer, page 5). Whether an ordinarily
skilled artisan “would be able” to texturize Guerra’s top
layer is not determinative of obviousness under 35 U.S.C. §
103. In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127
(Fed. Cir. 1984). In order to establish the obviousness of a
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