Appeal No. 2001-2559
Application No. 09/276,722
sulfate has this property. Accordingly, we cannot accept the
examiner’s position that it would have been obvious to utilize
barium sulfate as the filler material in JP ‘046.
We also cannot accept the examiner’s position that the use
of barium sulfate can be dismissed as an obvious matter of design
choice absent a showing of criticality. Criticality is not a
requirement of patentability. See W.L. Gore & Assocs. v.
Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ 303, 315 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984); In re Luvisi, 342 F.2d
102, 108, 144 USPQ 646, 651 (CCPA 1965). With respect to the
examiner’s rejection, the issue is whether it would have been
obvious to use barium sulfate as the filler material in JP ‘046.
In that there is no teaching in the applied prior art that barium
sulfate possesses the antifouling property required by JP ‘046,
it cannot be said that the applied reference teachings
demonstrate that barium sulfate would be suitable for the
purposes of JP ‘046.
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