Appeal No. 2000-0019
Application 08/977,451
We disagree with Appellants’ interpretation of the reference. The negative
teachings, while important, are only a portion of the art available to the person of
ordinary skill in the art. We remind Appellants that the test for obviousness involves
consideration of what the combined teachings, as opposed to the individual teachings,
or portions, of the references would suggest to those of ordinary skill in the art. Young,
927 F.2d at 591, 18 USPQ2d at 1091 (Fed. Cir. 1991); Keller, 642 F.2d at 425, 208
USPQ at 881.
The Coleman reference taught that uncoated microspheres could be
compounded into a polyolefin composition to control certain physical properties
(although the results are stated to be less than optimal for rigorous applications), the
combined references also taught that a chain scission agent can be added to control
certain physical properties. Marzola additionally teaches adding the chain scission
agent in the polyolefi n melt.4
One of ordinary skill in the art would have recognized that there are two locations
in which the chain scission agent could be incorporated into a composition as claimed,
in the polyolefin or added into another component such as the microspheres. Marzola
taught one method, Coleman taught coated or uncoated microspheres. Coleman’s
failure was not necessarily attributable to a placement of the chain scission agent in a
particular location; rather, it was apparently because no chain scission agent was
present at all during compounding and extrusion. Marzola taught one of skill in the art
to place the agent in the melt, which would have led one of ordinary skill in the art to a
4 The present application claims are open-ended and do not exclude the addition of the chain scission
agent in the polyolefin melt.
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