Appeal No. 2000-0343
Application 08/849,008
The examiner argues that “it would have been obvious to
one so skilled to employ the sequential methodology and
powder-form resin of the secondary references in the process
of Gaylord (‘230) in place of the corresponding, analogous
methodology and resin form employed therein; mere substitution
of one known set of elements for another (and in a
like/similar environment) involved” (answer, page 6). In
order for a prima facie case of obviousness to be established,
however, the teachings from the prior art itself must appear
to have suggested the claimed subject matter to one of
ordinary skill in the art. See In re Rinehart, 531 F.2d 1048,
1051, 189 USPQ 143, 147 (CCPA 1976). The examiner’s argument
does not include the required explanation as to how the
references themselves would have led one of ordinary skill in
the art to make the substitutions referred to by the examiner.
The examiner argues that the Gaylord ‘230 hydroxyl group-
containing particles can be cellulosic particles (answer,
pages 8-9). In support of this argument the examiner points
out (answer, page 9) that Gaylord ‘230 states that the
8
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