Appeal No. 2003-0845 Page 4
Application No. 09/689,818
the concentration of the copolymer with respect to the total composition is not
taught by Dubeif, appellants conclude that the combination would result in the
destruction of the intended operation in Dubeif, and is also the basis of an
improper rejection under section 103. See Appeal Brief, pages 6-7. We agree.
The burden is on the examiner to make a prima facie case of
obviousness, and the examiner may meet this burden by demonstrating that the
prior art would lead the ordinary artisan to combine the relevant teachings of the
references to arrive at the claimed invention. See In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598-99 (Fed. Cir. 1988). Obviousness is determined in
view of the sum of all of the relevant teachings in the art, not isolated teachings
in the art. See In re Kuderna, 426 F.2d 385, 389, 165 USPQ 575, 578 (CCPA
1970); see also In re Shuman, 361 F.2d 1008, 1012, 150 USPQ 54, 57 (CCPA
1966). In assessing the teachings of the prior art references, the examiner
should also consider those disclosures that may teach away from the invention.
See In re Geisler, 116 F.3d 1465, 1469, 43 USPQ2d 1362, 1365
(Fed. Cir. 1997).
The claims require that the insoluble polymer particles in a concentration
of 15% (claim 1) or a concentration of 10% (claim 34). Dubeif teaches with
respect to the copolymer:
The water-in-oil emulsion containing the cross-linked
ammonium acrylate/acrylamide (95/5 by weight) copolymer is
preferably present in the aqueous dispersion in proportions such
that the concentration of copolymer is between 0.05 and 10% by
weight and preferably between 0.1 and 5% by weight of copolymer
active substance, relative to the total weight of the dispersion.
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