Appeal No. 1998-2733
Application 08/718,613
encompassed by the claim that is, of course, “the ultimate of obviousness.” In re Fracalossi, 681 F.2d
792, 794, 215 USPQ 569, 571 (CCPA 1982). Thus, to the extent that the Ukai anticipates the
claimed painted object encompassed by appealed claim 10, the case of obviousness is irrebuttable. Id.
Furthermore, on this record, we also agree with the examiner that the combination of Ukai and
Knobel would have reasonably suggested to one of ordinary skill in this art that the thiocyanate salts
used in polymer formulations to form polyurethane that can be molded into a shaped object that is then
electrostatically painted, can be supplemented or interchanged with perfluoroalkyl sulfonic acid anion
non-volatile metal salts, accompanied an enhancer, which non-volatile salts are shown by Knobel to
provide polymers formed from formulations containing materials that include or form urethane and/or
urea groups with conductivity (e.g., cols. 1-2, col. 2, lines 38-49, cols. 5-6, col. 6, line 35, to col. 9,
line 52, and col. 9, line 53, to col. 10, line 63), with the reasonable expectation that such a shaped
object can be electrostatically painted as shown by Ukai. Accordingly, one of ordinary skill in the art
following the combined teachings of these references would have reasonably arrived at the claimed
invention. 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 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 be expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to those of ordinary skill in the
art.”).
Accordingly, since a prima facie case of obviousness has been established over Ukai and
Knobel, we have again evaluated all of the evidence of obviousness and nonobviousness based on the
record as a whole, giving due consideration to the weight of appellants’ arguments and the evidence in
the submitted affidavit. See generally, In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
sulfonates” (specification, page 24, Table 2; see also, e.g., page 7).
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