Appeal No. 99-1216
S.N. 08/356,194
Claims 1, 4-8, 10-12, and 16-26 stand rejected under
35 U.S.C. § 103 over Toyoshima in view of Ilnyckyj and
further in view of Feldman.
OPINION
For the reasons set forth below, we reverse the above-
noted rejection.
The examiner’s position is that it would have been
obvious to one of ordinary skill in the art to have
substituted the copolymer (A) of Toyoshima with the
butylacrylate disclosed in Ilnyckyj, in view of the
disclosure found in column 5, lines 6-8 of Ilnyckyj.
(answer, pages 4-5).
Appellants argue that there is no teaching in
Ilnyckyj or Toyoshima to suggest to one skilled in the art
to substitute the materials of Ilnyckyj for the copolymer
(A) of Toyoshima. Appellants argue that the particular
copolymer (A) of Toyoshima must have an alkoxyalkyl group,
and that the examiner’s proposed substitution contradicts
this aspect of Toyoshima’s invention. (brief, page 4).
We note that the initial burden of presenting a prima
facie case of unpatentability on any ground rests with the
examiner. See In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). We also note that
obviousness can be established by combining or modifying
the teachings of the prior art to produce the claimed
invention where there is some teaching, suggestion, or
motivation to do so found either in the references or in
the knowledge generally available to one of ordinary skill
in the art. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
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