Appeal No. 2004-0778
Application No. 10/172,933
teaching may relate to a non-preferred embodiment, it is well
established that an applied reference may be relied upon to
establish obviousness under 35 U.S.C. § 103 not only for the
preferred embodiments disclosed therein but for all that it would
have reasonably suggested to one having ordinary skill in the
art. Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807, 10 USPQ2d
1843, 1846 (Fed. Cir. 1989). In view of this legal principle, we
are convinced that Deetz teaches or at least would have suggested
mixing iron particles only with paint as required by the appealed
claims. The appellant’s opposing arguments including the
aforementioned “teaching away” argument lack persuasive merit
because they are contrary to the explicit and unambiguous column
4 teaching of Deetz.
In light of the foregoing, it is our determination that the
reference evidence adduced by the examiner establishes a prima
facie case of unpatentability which the appellant has failed to
rebut with argument and/or evidence of patentability. We shall
sustain, therefore, the examiner’s section 103 rejection of all
appealed claims as being unpatentable over Deetz. See In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).
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