Appeal No. 2001-0851
Application No. 09/042,735
assumption. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178
(CCPA 1967), cert. denied, 389 U.S. 1057 (1968), reh’g denied,
390 U.S. 1000 (1968).
Likewise, an obviousness conclusion is not supported by the
examiner’s contention that “one of ordinary skill would have been
able to tailor the desired initial viscosity of the adhesive.”
That is, even if correct, the contention simply does not lead to
a conclusion that the initial viscosity defined by the appealed
claims would have been obvious to an artisan with ordinary skill.
The mere fact that the initial viscosity of the adhesive could be
modified by an artisan would not have made the modification
obvious unless the prior art suggested the desirability of such a
modification. In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984). Here, the applied prior art contains no
teaching or suggestion concerning the here claimed initial
viscosity or the desirability thereof.
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