Appeal No. 2000-0019
Application 08/977,451
compounding or extrusion when used in combination with a base polypropylene having
a low melt flow index. The problem can be overcome with high melt flow index material,
but the resulting material is said to have “unsuitable mechanical properties for flowline
insulation” citing Coleman, page 2, lines 23-31 (Appeal Brief, page 11, lines 17-25).
The Examiner points to Coleman’s teaching that the pretreatment of the
microspheres is optional and is preferred for vigorous applications to accurately control
mechanical properties, noting that “The total disclosure of the reference clearly
encompasses using treated and untreated microspheres and the advantage of the
treatment.” (Examiner’s Answer, page 8, lines 9 -10). The Examiner also notes that the
present claims contain no limitation to “rigorous applications” (Examiner’s Answer, page
8, line11).3
In the Reply Brief, the Appellants sum up their position on the prima facie case of
obviousness thusly:
…the cited combination …. fails to raise a prima facie case of obviousness
because (1) the prior art contains no motivation to combine the features of these
references as suggested by the Patent Office, and (2) one of ordinary skill would
not have a reasonable expectation of success that the claimed subject
composition would work for its intended purpose.”
(Reply Brief, page 3, lines 6 -12).
We disagree. The Appellants have overly narrowly read particular segments of
the Coleman and Marzola references.
The test for obviousness involves consideration of what the combined teachings,
as opposed to the individual teachings, of the references would have suggested to
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