Appeal No. 1997-3355
Application No. 08/375,456
out by appellant on page 4 of the Brief. The examiner asserts that the form of the
wax would have been a matter of design choice (Answer, page 5), however, the
examiner fails to point out any suggestions found in the prior art that would lead
one skilled in the art to have chosen a dry, powdered wax coating in the process
of Biddle. In a proper obviousness determination, " [w]hether the changes from
the prior art are 'minor', . . . the changes must be evaluated in terms of the whole
invention, including whether the prior art provides any teaching or suggestion to
one of ordinary skill in the art to make the changes that would produce the
[claimed subject matter] . . . ." In re Northern Telecom, Inc. v. Datapoint Corp.,
908 F.2d 931, 935, 15 USPQ2d 1321, 1324 (Fed. Cir. 1990), cert. denied, 498
U.S. 920 (1990). This includes what could be characterized as simple changes,
as stated in In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984) “[t]he mere fact that the prior art could be so modified would not have made
the modification obvious unless the prior art suggested the desirability of the
modification.”
Here, there is no teaching or suggestion in the prior art that would lead one of
ordinary skill in the art to modify the Biddle process by utilizing a dry, powdered wax
coating. Moreover, appellant’s ability to complete the process in a single piece of
equipment without intermediate drying operations, and an ability to imprint the final
coated, polished particles counters the examiner’s assertion that use of a dry,
powdered wax coating is merely a "design choice." See In re Gal, 980 F.2d 717,
719, 25 USPQ2d 1076, 1078 (Fed. Cir. 1992) (finding of "obvious design choice"
precluded where the claimed structure and the function it performs are different from
the prior art).
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