Appeal No. 2003-1885
Application No. 09/837,226
and can be used as an underlayment or facer material.” Answer,
page 4; see also page 8.
When combining the teaching of two or more references, the
burden is on the examiner to establish a motivation, reason, or
suggestion for combining the teachings of the references. See In
re Mayne, 104 F.3d 1339, 1342, 41 USPQ2d 1451, 1454 (Fed. Cir.
1997). The examiner may establish this motivation, reason, or
suggestion by showing that the combination is suggested by the
teachings of the prior art references themselves, the knowledge
of one of ordinary skill in the art, or, in some cases, from the
nature of the problem to be solved. See Pro-Mold & Tool Co. v.
Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626,
1630 (Fed. Cir. 1996). In this appeal we determine that the
examiner has failed to establish a convincing motivation, reason
or suggestion for combining Green and Gay as proposed in the
rejections on appeal.1
As correctly argued by appellants (Brief, page 10; Reply
Brief, pages 1-2), the examiner’s finding that the abstract of Gay
teaches a water resistant coating utilized to impregnate fiber mat-
1The Ramig, Randall and Jaffee references, cited by the
examiner to show various features of several dependent claims
(Answer, pages 5-6), do not remedy the deficiencies discussed
below with respect to the combination of Green and Gay.
4
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