Appeal No. 2000-0482
Application 08/569,256
is not absolutely desirable from environmental points of view.”
Appeal Brief, pages 7-8 (quoting Wagner, column 3, lines 22-32).
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, . . . would be led in a
direction divergent from the path that was taken by the
applicant.” In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1131
(Fed. Cir. 1994). While the referenced passage in Wagner might
discourage some from utilizing PTFE in combination with silicone
oils, others would likely find that the increased effectiveness
provided by the combination would outweigh possible additional
process steps or precautions needed to address environmental
concerns. See In re Farrenkopf, 713 F.2d 714, 718, 219 USPQ 1, 4
(Fed. Cir. 1983)(“That a given combination would not be made by
businessmen for economic reasons does not mean that persons
skilled in the art would not make the combination because of some
technological incompatibility. Only the latter fact would be
relevant.”)(citation omitted).
Accordingly, we find that appellants have failed to
rebut the examiner’s prima facie case of obviousness. The
rejection is affirmed.
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