Appeal No. 99-1216
S.N. 08/356,194
1596, 1598 (Fed. Cir. 1988). The mere fact that 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, 682, 16 USPQ2d 1430, 1432 (Fed. Cir. 1990).
Here, we find the examiner has not convincingly
explained why one skilled in the art would have been
motivated to substitute the copolymer (A) of Toyoshima with
the butylacrylate disclosed in Ilnyckyj. It appears that
the examiner believes that because the butylacrylate is
grouped with a C13oxoalkylmethacrylate at column 5, lines 6-
8 of Ilnyckyj, these compounds are equivalent and therefore
each would achieve the same results. (answer, pages 4-5).
However, this disclosure of Ilnyckyj does not teach that
the butylacrylate is equivalent to the particular copolymer
(A) of Toyoshima, especially in the context of Toyoshima
(i.e., combining with copolymer (B)). Furthermore, we
agree with appellants’ statement that the copolymer (A) of
Toyoshima requires an alkoxyalkyl group, and therefore,
there is no motivation to replace it with a non-alkoxyalkyl
group type compound, as proposed by the examiner. (brief,
page 4).
The examiner discusses Table 4 of Toyoshima. (answer,
page 5). We find that Table 4 establishes that examples 1-
7 achieve good results with respect to pour point values
and cold filter plugging point values. These examples
involve the use of Toyoshima’s particular copolymer (A)
with copolymer (B), wherein the copolymer (A) requires an
alkoxyalkyl group. Examples 1-7 achieves better cold
filter plugging point values than all of the other
Comparative Examples listed in Table 4. This shows that the
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