Appeal No. 2002-0526
Application No. 09/141,515
reasonably appeared to one of ordinary skill in the art to be readily substituted for the
rheological agent in the composition of Ramin which comprises an organic solvent. In
our view, the examiner has provided evidence of the requisite motivation to combine the
cited references to arrive at the exact same composition, having the attendant
properties, as that claimed.
Finally, appellant argues that the examiner misapplies the doctrine of inherency
and the doctrine of intended use with respect to the claim limitation that the
Acomposition forms a shiny film when applied to a support.@ We
agree with the appellant that the recitation that the
Acomposition forms a shiny film when applied to a support@ is a
recited feature of the claim and should not be characterized as
an Aintended use@. We are also mindful that Aobviousness is not
inherent anticipation.@ Trintec Industries Inc. v. Top-U.S.A.
Corp., 295 F.3d 1292, 1296; 63 USPQ2d 1597, 1600 (Fed. Cir.
2002); Jones v. Hardy, 727 F.2d 1524, 1529, 220 USPQ 1021, 1025
(Fed. Cir. 1984). The legal concepts of inherent anticipation and obviousness
each have their own set of legal requirements.
For the reasons herein, we agree that the examiner has provided a prima facie
case of obviousness for claim 23, which remains unrebutted by appellant with sufficient
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007