Appeal No. 2000-1180
Application 09/000,028
crosslinkable polyester resin composition”. This is explicitly
recited, for example, in claim 9 at lines 3-4. We agree with
appellant’s remarks made on page 10 of the brief, that this
recitation concerning cold cure cannot be ignored.
Additionally, we refer to the case of In re Lee, 277 F.3d
1338, 1445, 61 USPQ2d 1430, 1435 (Fed. Cir. 2002). In this case,
the court stressed the import of articulating and making of
record knowledge negating patentability. Here, other than the
conclusionary statements provided by the examiner that each of
the references disclose a composition that inherently is a solid
at 20°C, and that is inherently cold curable, and that inherently
qualifies as a shaped article, the examiner provides no factual
support for his conclusions in this regard.
With regard to the 35 U.S.C. § 103 rejection, we reiterate
that with respect to obviousness, the examiner has the initial
burden of factually supporting any prima facie conclusion of
obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992). Here, on page 4 of the answer, the
examiner does not explain why one of ordinary skill in the art
would have been motivated to modify each of the applied
references to arrive at appellant’s specifically claimed
composition. The examiner simply states that it would be within
the skill of one in the art to select suitable percentages of the
three ingredients to achieve a solid composition in these
references. We find such an explanation insufficient to support
a prima facie case of obviousness, and we again refer to the case
of In re Lee, 277 F.3d 1338, 1445, 61 USPQ2d 1430, 1435 (Fed.
Cir. 2002).
In view of the above, we reverse each of the rejections of
record.
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