Appeal No. 1999-2153
Application No. 08/958,848
formulating Iruvanti’s thermally conductive paste with polyesters
having any particular acid no. value much less the here claimed
polyester self-condensation reaction product having an acid no.
of about 45-85.
For all we know based on the record before us, an artisan
with ordinary skill would have formulated Iruvanti’s paste using
the polyesters of Stansfield without any regard whatsoever for
the acid no. value of the polyester. Certainly, it is clear that
these references contain no teaching or suggestion regarding acid
no. values of polyesters used in formulating a thermally
conductive paste. Furthermore, we discern no convincing
rationale in the answer as to why the artisan would have
formulated Iruvanti’s paste with the particular polyesters having
the particular acid no. values required by the appealed claims.
Under these circumstances, it is our determination that the
examiner has failed to carry his initial burden of establishing a
prima facie case of obviousness within the meaning of 35 U.S.C.
§ 103(a). In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472, 223
USPQ 785, 787-88 (Fed. Cir. 1984). It follows that we cannot
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