Appeal No. 2002-1768
Application 09/538,786
[t]he negative pressure that is created by this diffusion can cause a deformation of the foam”
(page 249).
Upon carefully considering appellants’ arguments in light of the cited pages from Oretel,
we find, as did the examiner (answer, page 5), that the arguments simply do not reflect any
teachings of Dietrich, which specifically states that water is an optional material, thus leading one
of ordinary skill in this art to consider that the presence of water is unnecessary in the process of
this reference. Thereore, we are not persuaded by appellants’ arguments that Dietrich would
have led one of ordinary skill in this art away from following the clearly intended teachings
thereof. Cf. In re Gurley, 27 F.3d 551, 552-53, 31 USPQ2d 1130, 1131-32 (Fed. Cir. 1994) (“A
reference may be said to teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant. The degree of teaching away
will of course depend on the particular facts; in general, a reference will teach away if it suggests
that the line of development flowing from the reference’s disclosure is unlikely to be productive
of the result sought by the applicant. [Citations omitted.]”). Thus, while appellants’ argument
and evidence may suggest a different modification of the teachings of the reference based on the
amount of water that one of ordinary skill in this art may find desirable, it does not establish that
this person would not use an amount of water at the lower end of the range taught by Dietrich,
that is, little or no water. cf. In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed.
Cir. 1997) (“The statement in Zehender that ‘[i]n general, the thickness of the protective layer
should not be less than about [100 Angstroms]’ falls far short of the kind of teaching that would
discourage one of ordinary skill in the art from fabricating a protective layer of 100 Angstroms or
less.”).
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in Dietrich with appellants’ countervailing
evidence of and argument for nonobviousness and conclude that the claimed invention
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