Appeal No. 1999-1942
Application 08/770,037
oxide component (b) is used in combination because it
synergistically enhances the properties of the hydrated
alumina of component (a). Thus, we agree with Appellants'
argument (e.g., Br14) that there is no suggestion for using
the oxide of component (b) alone to prevent tracking, which is
the Examiner's motivation for the rejection. The motivation,
if any, would be to use the anti-tracking filler system having
both components (a) and (b) for its improved anti-tracking
characteristics and such a material would contain an oxide.
While it is true that claim 1 is open ended and does not
preclude the addition of the hydrated alumina of
component (a), the fact that the oxide component (b) is only
an additive to the hydrated alumina for its synergistic
effects indicates that hindsight was employed to find a
material that happens to contain an oxide rather than a
suggestion to use oxide itself. "The mere fact that the prior
art may be modified in the manner suggested by the Examiner
does not make the modification obvious unless the prior art
suggested the desirability of the modification."
In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84
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