Appeal No. 1997-3036
Application No. 08/268,094
with an acrylic acid after glycidylation such that pendant acrylate moieties may be present in their
epoxide resins.
The examiner cites Green and Kajiwara’s as teaching their post-glycidylated epoxides as
possessing improved properties over conventional epoxides. Yet, Green and Kajiwara’s
statements do not provide basis for the assumption that one skilled in the art would believe that
acrylating post-glycidylated epoxides would also possess the improved properties. Such
reasoning that one skilled in the art, provided with the primary and secondary references, would
readily recognize the benefits of acrylating the post-glycidylated epoxides is selective hindsight
which is no more applicable to the design of experiments than it is to the combination of the
prior art teachings. See In re Dow Chemical Co., 837 F.2d 469, 471, 5 USPQ2d 1529, 1530
(Fed. Cir. 1988).
The mere fact that the references can be combined or modified does not render the
resultant combination obvious unless the prior art also suggests the desirability of the
combination. In re Mills, 916 F.2d 680, 682, 16 USPQ2d 1430, 1432 (Fed. Cir. 1990). Yet,
Fekete, Takiyama, Green or Kajiwara, alone or in combination, do not teach or suggest the
desirability of making appellants' claimed epoxy acrylate. Accordingly, upon careful review of
the record and the references themselves, it is apparent that the examiner has failed to support
their burden of establishing a prima facie conclusion of obviousness.
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