Appeal No. 1998-2733
Application 08/718,613
appellants’ countervailing evidence of and argument for nonobviousness and conclude that the claimed
invention encompassed by appealed claims 10 through 18 and 20 would have been obvious as a
matter of law under 35 U.S.C. § 103(a).
Turning now to the ground of rejection based on Pierce, we must agree with appellants (brief,
pages 9-10) that the difference between the painted object of appealed claim 10 and the painted
object of the reference resides in the manner in which the conductive inducing material is incorporated
into the polymer. Indeed, Pierce prepares an ion-conductive polymer which does not contain urea
and/or urethane groups and then either dopes this polymer into the matrix of a generally non-ion-
conductive structural polymer, which can be a thermoplastic polyurethane, or copolymerizes the ion-
conductive polymer with that polymer (cols. 5-8). Either method would not result in the claimed
painted object and the examiner has not provided any scientific explanation or evidence either
explaining why the objects so prepared fall within appealed claim 10 or establishing an 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 from the teachings of Pierce alone. See generally, In re Rouffet, 149 F.3d
1350, 1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998) (“hindsight” is inferred when the specific
understanding or principal within the knowledge of one of ordinary skill in the art leading to the
modification of the prior art in order to arrive at appellant’s claimed invention has not been explained);
B.F. Goodrich Co. v. Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318
(Fed. Cir. 1996) (“When obviousness is based on a particular prior art reference, there must be a
showing of a suggestion or motivation to modify the teachings of that reference. [Citation omitted.]
This suggestion or motivation need not be expressly stated. [Citation omitted.]”). Accordingly, we
reverse this ground of rejection.
The examiner’s decision is affirmed-in-part.
No time period for taking any subsequent action in connection with this appeal may be extended
under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
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