Appeal No. 1998-3162
Application 08/453,149
A prima facie case of obviousness is established by showing that some 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,
including each and every limitation of the claims, without recourse to the teachings in appellants’
disclosure. See generally, In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458 (Fed. Cir.
1998); Pro-Mold and Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573, 37 USPQ2d
1626, 1629-30 (Fed. Cir. 1996); 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.]”); In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991); In re Fine,
837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chem. Co.,
837 F.2d 469, 473, 5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988).
It is readily apparent that the plain language of appealed claim 1, when considered in light of the
written description in the specification as interpreted by one of ordinary skill in this art, see, e.g., In re
Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997), simply requires that the
hydroxylated fluorinated copolymer must be prepared solely from one member of each of the three
stated groups of monomers. It is readily apparent from Mohri that the fluorine containing copolymers
disclosed therein must be prepared from at least one member of each of four groups of monomers,
wherein none of the members of two of the required groups are among those specified in the monomer
groups of appealed claim 1. Thus, in routinely preparing the copolymers of Mohri, one of ordinary skill
in this art could have selected certain members of two required groups which fall within the monomers
required in appealed claim 1 for purposes of copolymerizing the same with monomers selected from
each of the other two required groups.
The examiner’s position appears to be that even though Mohri is “silent” with respect to
hydroxylated fluorinated copolymers as required by appealed claim 1, “one having ordinary skill in the
art would have found it obvious to cull, from the disclosure of [Mohri] the precisely defined copolymer
including a combination of tetrafluoroethylene (a) and trifluoroethylene (b), alone, and further in
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