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.
Page 10
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007