Appeal No. 1999-2661
Application 08/430,632
teaches “that specific hydrocarbon resin materials can be blended with polypropylene in order to
produce materials having improved barrier properties” (answer, page 5). On this evidence, the
examiner concludes that, prima facie, one of ordinary skill in this art would have been motivated
to include the hydrocarbon resin blended with polypropylene as the polypropylene composition
in layer 3 of Van Iseghem in the reasonable expectation of obtaining films with improved barrier
properties (id.).
We agree with the examiner. We find that Bossaert does disclose multi-layer films
having good barrier properties with respect to moisture and oxygen (e.g., col. 1, lines 35-37; see
also “film 2” and FIGs. 6 and 7). Thus, we find that one of ordinary skill in this art routinely
following the combined teachings of Van Iseghem and Bossaert would have arrived at a multi-
layer film which satisfies all of the requirements of appealed claim 11. Indeed, as we pointed out
above, the hydrocarbon resins disclosed in Bossaert satisfy the definition of “hydrocarbon resin”
set forth in claim 11. See, e.g., Pro-Mold & Tool Co. v. Great lakes Plastics Inc., 75 F.3d 1568,
1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996) (“In this case, the reason to combine [the
references] arose from the very nature of the subject matter involved, the size of the card
intended to be enclosed.”); In re Gorman, 933 F.2d 982, 986-87, 18 USPQ2d 1885, 1888-89
(Fed. Cir. 1991) (“The extent to which such suggestion [to select elements of various teachings
in order to form the claimed invention] must be explicit in, or may be fairly inferred from, the
references, is decided on the facts of each case, in light of the prior art and its relationship to the
applicant’s invention.”); In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981)(“The test for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it that the claimed invention
must be expressly suggested in any one or all of the references. Rather, the test is what the
combined teachings of the references would have suggested to those of ordinary skill in the art.”).
Accordingly, since a prima facie case of obviousness has been established over the
combined teachings of Van Iseghem and Bossaert, we have again evaluated all of the evidence of
obviousness and nonobviousness based on the record as a whole, giving due consideration to the
weight of appellant’s arguments. See generally, In re Johnson, 747 F.2d 1456, 1460, 223 USPQ
1260, 1263 (Fed. Cir. 1984); Piasecki, supra.
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