Appeal No. 2000-1435 4
Application No. 08/601,785
achieve depending upon what type of object was intended allowing
with the size of the thickness dimension called for.”
Firstly, because the combination of references does not
teach or suggest all the limitations of the claims, the examiner
has not set forth a prima facie case. See In re Wilson, 424 F.2d
1382, 1385, 165 USPQ 494, 496 (CCPA 1970).
Also, the examiner’s reasoning for concluding that it would
have been obvious to modify the disclosure of the Polyurethane
Handbook so as to expand the unfoamed polymeric material in only
the thickness dimension is insufficient to establish a prima
facie case for the following reasons.
We note that in order to establish a prima facie case of
obviousness, the prior art relied upon, coupled with the
knowledge generally available in the art at the time of the
invention, must contain some suggestion or incentive that would
have motivated the skilled artisan to modify a reference or to
combine references. See In re Fine, 837 F.2d 1071, 1073-74, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988); Ex parte Skinner, 2 USPQ2d
1788, 1790 (Bd. App. & Int. 1986). The examiner’s reasoning
provides no such suggestion or incentive.
Also, the proposed modification of the prior art must have
had a reasonable expectation of success, determined from the
vantage point of the skilled artisan at the time the invention
was made. See Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200,
1207-08, 18 USPQ2d 1016, 1023 (Fed. Cir.) cert. denied, 502 U.S.
856 (1991). The examiner does not explain how the skilled
artisan would have had a reasonable expectation of success of
expanding the unfoamed polymeric material in only the thickness
dimension to form the foamed polymeric material wherein
interplanar gas-filled cells have a dimension in a direction
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