Appeal No. 2001-0214
Application No. 08/826,283
positions. This review leads us to conclude that the examiner’s
Section 103 rejection is not well founded. Accordingly, we
reverse the examiner’s Section 103 rejection for essentially the
reasons set forth by the appellants in their Brief and Reply
Brief. We add the following primarily for emphasis.
“When a rejection depends on a combination of prior art
references, there must be some teaching, suggestion, or
motivation to combine the references [citations omitted].” In re
Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed. Cir.
1998). When determining the patentability of a claimed invention
which combines several elements, “‘the question is whether there
is something in the prior art as a whole to suggest the
desirability, and thus the obviousness, of making the combination
[citations omitted].’” Rouffet, 149 F.3d at 1356, 47 USPQ2d at
1456.
Here, the examiner takes the position that (Answer, pages
7 and 8):
Having the prior art before him, it would have been
obvious to the artisan in the art to employ Verdone et
al[.]’s process to produce silver as an elemental metal in
Chagnon[‘s] lubricant composition and colloidal suspension
and to select other metal elements such as tin, zinc and
copper because nee Hajna suggests that the metals are
functional[ly] equivalent in a colloidal suspension to the
metals of Rosensweig and Borduz et al[.] used in their
colloidal suspension providing the motivation to select such
4
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007