Ex parte EICKEN et al. - Page 10

              Appeal No. 1997-3589                                                                                            
              Application No. 08/117,013                                                                                      

              would function as a filament lubricant.  Furthermore, the examiner has failed to identify any suggestion        

              to modify the water-soluble acrylic sizing agent such that it could improve the surface -slip properties of     

              treated filaments.  Thus, even if one of ordinary skill in the art were to employ the modified water-           

              soluble acrylic as Fujita’s sizing agent for glass fibers, there is no basis for the assumption that such a     

              sizing agent would function as a lubricant for the glass fibers.                                                

                      Fujita’s high molecular sizing agent fails to render the invention obvious as Fujita’s high             

              molecular compound is not prepared from a hydrophobic diol, let alone appellants' claimed block b)              

              hydrophobic diols.  Furthermore, there is no suggestion in the references to prepare Fujita’s high              

              molecular sizing agent compounds from the optional hydrophobic diols of Yanai.                                  

                      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, 16 USPQ2d 1430 (Fed. Cir. 1990).  Here, the references do not provide any support                 

              for the contention that one skilled in the art would use the intermediate, unmodified                           

              hydrophilic/hydrophobic polyesters of Yanai in a sizing composition, let alone that of Fujita.                  

              Furthermore, there is no teaching or suggestion in the references for modifying the polyesters of Fujita        

              to have the claimed hydrophobic block B) diols.  Accordingly, upon careful review of the record and             

              the references themselves, it is apparent that the examiner has failed to support his burden of                 

              establishing a prima facie conclusion of obviousness.                                                           

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