Appeal No. 2003-1885
Application No. 09/837,226
faced gypsum board is in error, as apparently admitted by the
examiner (Answer, page 9). “Where the legal conclusion [of
obviousness] is not supported by facts it cannot stand.” In re
Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967).
Appellants also correctly argue that the examiner has not
established motivation for the proposed combination of Green
and Gay (Brief, pages 9-11; Reply Brief, page 6). Although
the examiner is correct that the gypsum board of Green can be
characterized as a facer or support surface for building
construction, which is the same general use as taught by Gay
(Answer, page 8; see Green, col. 11, ll. 19-35), we determine that
the examiner has not established the requisite motivation or
suggestion for the proposed combination of references. Gay teaches
the advantage of his non-porous mat in that it is “an economical
and weather resistant coating composition” (col. 2, ll. 61-63).2
However, Green also teaches water resistant properties as well as
“significant economic ... advantages” over products currently
available (col. 5, ll. 44-48). Accordingly, the examiner has not
2The “dimensionally stable” advantage cited by the examiner
(Answer, pages 4 and 8) is merely the result of using glass mats
(see Gay, col. 1, ll. 49-51). Since the preferred fibrous mat of
Green is a fiber glass mat (col. 6, ll. 35-37), the product of
Green would also have been “dimensionally stable.”
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