Appeal No. 1997-4318
Application 08/469,806
down and disperse” in the building material when subjected to shearing forces during mixing, and that
there is newly submitted evidence in the two Linde declarations under 37 CFR § 1.132.5
Accordingly, the issue in this appeal is whether, on this record, the examiner has established
that, prima facie, the combined teachings of the applied prior art as a whole would have provided one
of ordinary skill in this art with some objective teaching, suggestion or motivation in the applied prior art
taken as a whole and/or knowledge generally available to one of ordinary skill in the art would have led
that person to the claimed invention as a whole, including each and every limitation of the claims, without
recourse to the teachings in appellants’ disclosure. In considering this matter, we were mindful that
[t]he extent to which such suggestion [to select elements of various teachings in order to form
the claimed invention] must be explicit in, or may be fairly inferred from, the references, is
decided on the facts of each case, in light of the prior art and its relationship to the applicant’s
invention.
In re Gorman, 933 F.2d 982, 986-87, 18 USPQ2d 1885, 1888-89 (Fed. Cir. 1991); see also, e.g.,
Pro-Mold & Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573, 37 USPQ 1626, 1629-30
(Fed. Cir. 1996) (“In this case, the reason to combine [the references] arose from the very nature of the
subject matter involved, the size of the card intended to be enclosed.”); In re Vaeck, 947 F.2d 488,
493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991) (“Both the suggestion and the reasonable expectation
of success must be founded in the prior art, not in the applicant’s disclosure.”); In re Dow Chemical
Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531(Fed. Cir. 1988) (“The consistent criterion for
determination of obviousness is whether the prior art would have suggested to one of ordinary skill in
the art that this process should be carried out and would have reasonable likelihood of success, viewed
in the light of the prior art.”); In re Sovish, 769 F.2d 738, 742-43, 226 USPQ 771, 773-74 (Fed. Cir.
1985) (In evaluating the relevance of the various teachings of a reference, skill must be presumed on the
part of those of ordinary skill in this art.); In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must
5 The first Linde declaration (Linde I) was filed in parent application 08/310,625 on October 11, 1994
(Paper No. 2) and the second Linde declaration (Linde II) was filed in the present application on July
10, 1995 (Paper No. 14).
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