Appeal No. 2000-2192
Application 08/943,123
teachings of the Levy references, Reick and Lewis would have suggested to one of ordinary skill
in this art to use the superabsorbent solid organic polymer containing herbicidal delivery
compositions and insecticidal compositions disclosed in the respective Levy references, either
alone or with other additives as shown by Reick and Lewis, in a method of applying a lubricant
composition to a surface because the “surface” to be lubricated is not specified in the appealed
claims. In doing so, the examiner takes the position that appellant has not established that the
combination of references would not produce lubricating properties when applied to a substrate,
that the polymers of Lewis and Reick are not the superabsorbent polymers required by the claims,
and that the Levy reference are non-analogous art (answer, pages 5-6 and 7-8). Appellant
submits that the examiner has not established why one of ordinary skill in this art would have
combined the teachings of the Levy references drawn to herbicidal and insecticidal compositions
with the lubricant compositions of Reick and Lewis, pointing out the Levy references are
nonanalogous prior art and that the examiner has not established that the polymers of Reick and
Lewis are superabsorbent polymers (reply brief, pages 6-7 and 8-10; see also brief, pages 18-22).
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 arranged as
required by the claims, without recourse to the teachings in appellant’s 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 Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); 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.
We agree with appellant that the examiner has not established on this record that one of
ordinary skill in this art would have combined the Levy references with Reick and Lewis. We
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