Appeal No. 1999-0426
Application No. 08/247,894
appellants. The examiner admits that Koblitz does not teach this limitation. (See answer
at page 5.) We agree with the examiner that this is not taught by Koblitz. The examiner
states that the “differences between Koblitz’s structure and the subject matter sought to be
patented do not render the claimed construction patentable, since various sealing
materials including the sealing material with the claimed properties are known in the art,
and the selection of any of these known sealants for a waterproof structure of the sort here
involved would have been within the level of ordinary skill in the art.” (See answer at
pages 3-4.) The examiner further relies upon appellants’ Declaration to show “various
sealing materials are known in the art including the sealing material with the claimed
properties and the selection of any of these known sealants for a waterproof structure of
the sort here involved would have been within the level of ordinary skill in the art.” (See
answer at page 4.) While the examiner relies upon the Declaration, the examiner has not
set forth any statement by the declarant, Mr. Tomohiro, which supports the examiner’s
conclusion. Mr. Tomohiro merely sets forth the array of sealants which were tested and the
results of the tests which lead appellants to the claimed invention. Appellants argue that
the examiner “has failed to establish even a prima facie case of obviousness . . . The
examiner simply asserts without citation of any reference that one of ordinary skill in the art
would know to use a sealant with the properties recited in the claims.” (See brief at pages
7-8.) We agree with appellants. Appellants argue that there is no motivation to use the
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