Appeal No. 2002-0639 Page 10
Application No. 09/372,602
symbols or characters. Kozak, therefore, provides a suggestion to so place the microspheres of
Bingham to communicate symbols and characters.
We affirm the decision of the Examiner to reject claims 34 and 39 under 35 U.S.C.
§ 103(a) over Bingham in view of Kozak. We also extend the rejection to claims 1 and 10, the
claims from which claims 34 and 39 depend. It goes without saying, even though we will say it
here, that a combination of prior art that renders dependent claims unpatentable must also
necessarily render the claims they depend from unpatentable. Because our reasoning differs from
that of the Examiner and we extend the rejection to other claims, we denominate our affirmance
as involving a new ground of rejection. 37 CFR § 1.196(b)(2002).
While Kozak is also added to Bingham along with Hedblom ‘746 to reject claim 41, we
conclude that the Examiner has failed to establish a prima facie case of obviousness with respect
to this claim. Claim 41 is dependent on claim 40 which requires the presence of abrasive
elements. The Examiner has failed to provide a convincing reason why one of ordinary skill in
the art would have added the skid resistant particles of Hedblom’s pavement markers to the sheet
of Bingham. The sheet of Bingham is intended to be used in signs, fabrics, or transfer films
(Bingham at col. 1, ll. 6-9). The Examiner has failed to establish that skidding is a problem
associated with the signs, fabrics, or transfer films of Bingham.
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