Appeal No. 1997-3643
Application No. 08/484,047
1981).
In the present appeal, the examiner has failed to establish that Savageau necessarily discloses
an alkyd having a hydroxyl number from 40 to 260 and an acid number of less than 11 and that the
alkyd resin was prepared from an unsaturated fatty acid having an iodine number from 120 to 190.
Indeed, the examiner’s comments indicate that one skilled in the art following the teachings of Savageau
would not arrive at the claimed hydroxyl number of 40 to 260 nor would one skilled in the art be
motivated to form such an alkyd. Accordingly, Savageau does not motivate one skilled in the art to
form the claimed binder having an alkyd resin with a hydroxyl value of from 40 to 260.
As to the examiner’s rejection of the claims under obviousness, to establish a prima facie case
of obviousness, the prior art reference (or references when combined) must teach or suggest all the
claim limitations. See In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970) (“All
words in a claim must be considered in judging the patentability of that claim against the prior art.”).
Furthermore, the motivation to modify the prior art references must flow from some teaching in the art
that suggests the desirability or incentive to make the modification needed to arrive at the claimed
invention. In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed Cir. 1995); In re Gorman,
933 F.2d 982, 986-87, 18 USPQ2d 1885, 1888-89, (Fed. Cir. 1991) (“When it is necessary to
select elements of various teachings in order to form the claimed invention, we ascertain whether there
is any suggestion or motivation in the prior art to make the selection made by the applicant. [Citations
7
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