Appeal No. 2000-1804
Application 08/668,598
The Appellant’s Challenge to the Existence of a Prima Facie Case
The Appellant has provided a Declaration which contests whether a prima facie
case of obviousness exists, and have argued (1) the organosilsesquioxane polymer
disclosed in Bagley is utilized for the coating of glass fibers, not wood and no
reasonable expectation of success would have existed; (2) the organosilsesquioxane
polymer of Bagley is different from the alkyltrialkoxysilane of Cuthbert and Stark-Kasley
and consequently no reasonable expectation of success would have existed; (3) the
coatings of Bagley are very different from the coatings of Cuthbert and Stark-Kasley and
one of ordinary skill in the art would not have had a reasonable expectation that the
coating composition described in the Bagley patent would have been effective for the
same use; (4) there is no suggestion or motivation in the references to combine their
teachings, and there is an express teaching away from the use of an organic solvent.
Initially, we note that the burden is upon the Examiner to set forth a prima facie
case of obviousness. See In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1583
(Fed. Cir. 1996). More specifically, it is the burden of the Examiner to establish why one
having ordinary skill in the art would have been led to the claimed invention by the
reasonable teachings or suggestions found in the prior art, or by a reasonable inference
to the artisan contained in such teachings or suggestions. In re Sernaker, 702 F.2d
989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983). In addition, the Federal Circuit states that
"[t]he mere fact that the prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the prior art suggested the
desirability of the modification." In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007