Appeal No. 1997-3036
Application No. 08/268,094
Accordingly, we reverse these rejections.
To establish a prima facie case of obviousness, the prior art reference (or references when
combined) must teach or suggest all the claim limitations. See In re Royka, 490 F.2d 981, 180
USPQ 580, 583 (CCPA 1974). Furthermore, the motivation to modify the prior art references
must flow from some teaching in the art that suggests the desirability or incentive to make the
modification needed to arrive at the claimed invention. In re Napier, 55 F.3d 610, 613, 34
USPQ2d 1782, 1784 (Fed. Cir. 1995). Specifically, obviousness cannot be established by
combining the teachings of the prior art to produce the claimed invention, absent some teaching,
suggestion, or incentive supporting the claimed combination. In re Geiger, 815 F.2d 686, 688, 2
USPQ2d 1276, 1278 (Fed. Cir. 1987).
As discussed in detail below, the relied upon prior art fails to teach or suggest appellants'
claimed epoxy acrylates of formula III where Q is hydrogen and L possesses an acrylate end
group or where the epoxy acrylate possesses side radicals M where at least 10 mol% of the
radicals M that are not present in the end groups Q and L denote an acrylate moiety. Specifically,
none of the references, Fekete, Takiyama, Green, Kajiwara, alone or in combination teach or
suggest an epoxy acrylate of formula III with acrylate side radicals M or an epoxy acrylate with
one acrylate end group and one aromatic bifunctional compound having an -OH radical as the
other end group.
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