Appeal No. 1997-3609
Application No. 08/483,349
component from the polyurethane adhesive disclosed in Dormish.
While we recognize that the examiner has offered a reason as
to why one would be "motivated" to omit the amines from the
composition of Dormish, the examiner has, nonetheless, failed
to establish a prima facie case of obviousness.
We do not doubt that one skilled in this art could remove
the diamine/triamine component from the adhesive composition
described by Dormish. However, that is not the test under
35 U.S.C. § 103. See In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984) ("The 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."). Rather, in order to
support a prima facie case of obviousness within the meaning
of 35 U.S.C. § 103, there must be some reason, suggestion, or
motivation found in the prior art whereby a person of ordinary
skill in the field of the invention would have made the
modification required. Manifestly, that knowledge cannot come
from the applicants' invention itself. Diversitech Corp. v.
Century Steps, Inc., 850 F.2d 675, 678-79, 7 USPQ2d 1315,
1318 (Fed. Cir. 1988); In re Geiger, 815 F.2d 686, 688, 2
7
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