Appeal No. 1998-3087
Application 08/399,864
Richards and Handlin to remedy this deficiency (answer, pages 4-
5). The only reference relied upon for providing a reason to
modify Coolbaugh is Richards, and the examiner does not explain
why Richards, alone or in combination with the other references,
would have led one of ordinary skill in the art to
monohydroxylate the Coolbaugh polymer. See id. The examiner
merely states that if the Coolbaugh polymer were monohydroxlated,
one of ordinary skill in the art would have expected the result
to be useful curing properties (answer, page 5). In order for a
prima facie case of obviousness to be established, the references
must be such that they would have provided one of ordinary skill
in the art with both a suggestion to carry out appellants’
claimed invention and a reasonable expectation of success in
doing so, see In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438,
1442 (Fed. Cir. 1991); In re O’Farrell, 853 F.2d 894, 902, 7
USPQ2d 1673, 1680 (Fed. Cir. 1988), and the examiner has not
carried the burden of establishing that the applied references
meet these requirements.
Moreover, regarding the claims which recite an adhesive
composition, the examiner states that both Coolbaugh and Erickson
disclose use of their block copolymers in adhesives (answer,
page 5). Coolbaugh, however, teaches that the copolymers are
elastomeric vulcanizates having properties such as high
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