Appeal No. 2004-1099
Application No. 09/868,911
both of which are directed to creating score lines which are meant
to weaken the resin skin or thermoplastic film, not strengthen it
so that it does not rupture. Accordingly, we determine that the
examiner has not established any convincing motivation, suggestion
or incentive for combining the references as proposed. See In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999). Although the examiner is correct that the suggestion or
motivation to combine the references does not have to be the same
as appellant’s motivation to establish obviousness (Answer, pages
16-17),2 the examiner must establish some convincing motivation or
suggestion for combining the references as proposed. The general
statement that “all references teach ultrasonic processing of
polymeric materials” (e.g., Answer, page 13) is not sufficient (see
the Brief, page 6; In re Dembiczak, supra). As correctly argued by
appellants (Brief, pages 6-7), JP ‘118 is concerned with preventing
the welded portions of superposed resin films from becoming fragile
while the claimed invention (and JP ‘811) is directed to the
removal of resin material that is fused by ultrasonic vibration to
the sides of a groove, with appellant further teaching that this
removed material is hardened by blown cooling air. The examiner
2See In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311
(Fed. Cir. 1996).
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