Appeal No. 2002-2131
Application 09/009,597
In order to establish a prima facie case of obviousness, the examiner must show that some
objective teaching, suggestion or motivation in the applied prior art taken as a whole and/or
knowledge generally available to one of ordinary skill in this art would have led that person to
the claimed invention as a whole, including each and every limitation of the claims, without
recourse to the teachings in appellants’ disclosure. See generally, In re Rouffet, 149 F.3d 1350,
1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics
Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re Fine, 837 F.2d 1071,
1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chem. Co., 837 F.2d 469,
473, 5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988). The requirement for objective factual
underpinnings for a rejection under § 103(a) extends to the determination of whether the
references can be combined. See In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433-34
(Fed. Cir. 2002), and cases cited therein.
On this record, we must agree with appellants that the examiner has not made out a prima
facie case of obviousness with respect to the claimed invention. We find that Abele does
disclose a photopolymerizable printing plate for flexographic printing which comprises a
photopolymerizable layer which contains at least one elastomeric binder, at least one
ethylenically unsaturated monomer addition-polymerizable by actinic radiation, and a
photoinitiator or photoinitiator system (col. 1, lines 6-13; col. 2, lines 47-50), which generic
combination was acknowledged to be known in the art (col. 1, lines 59-62). Abele discloses that
among the disclosed “[s]uitable binders” known in the art, are “[l]linear and radial block
copolymers with polystyrene end blocks are especially preferred, such as, for example, . . .
(polystyrene/polybutadiene)4Si” which can have an average molecular weight between 80,000
and 300,00” (col. 5, lines 53-67). Thus, it seems to us that Abele would have disclosed the
claimed photopolymerizable composition to one of ordinary skill in this art to the extent of the
(polystyrene/polybutadiene)4Si subgenus.
The examiner correctly points out that Abele does not disclose the molecular weight
distribution or the di-block content of the (polystyrene/polybutadiene)4Si elastomeric binder,
extending the elastomeric binder with paraffinic oil or the shore A hardness of the non-
photopolymerized and the photopolymerized composition, which parameters are specifically
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