Appeal No. 2004-1869
Application No. 09/738,591
for a teaching of how to apply a polymer film to a metal substrate as Bentley describes a
preformed polymer sheet laminated to a metal surface. The Examiner relies upon Kaneko for
the teaching of applying polar silica particulates to a polymer surface in order to increase the
wettability of the surface. In making a determination of obviousness, one must look at what the
combined teachings of the references would have suggested to those of ordinary skill in the art.
As stated in In re Keller, 642 F.2d 413, 425, 208 USPQ 871,881 (CCPA 1981):
The test for obviousness is not whether the features of a secondary reference may
be bodily incorporated into the structure of the primary reference; nor is it that the
claimed invention must be expressly suggested in any one or all of the references. Rather,
the test is what the combined teachings of the references would have suggested to those
of ordinary skill in the art.
Here, the combined teachings of Bentley and Kaneko would have suggested applying the polar
particulates of Kaneko on the film of Bentley. Bentley describes a process of laminating a
polymer film onto the metal substrate of a heat transfer component to provide corrosion
resistance (Answer, p. 3). Kaneko indicates that there is a problem of inadequate wettability with
such corrosion resistant films and applies silica particulates to the polymer film to increase
wettability to solve the problem (Answer, p. 3). In the process of Kaneko the polymer film does
not exist until it is formed on the metal substrate, so Kaneko applies the silica particles after
applying the polymer to the metal substrate. One of ordinary skill in the art practicing the
process of Bentley utilizes a preformed polymer film. The preformed film described in Bentley
is in its final chemical form before lamination to the metal substrate (Bentley, col. 4, ll. 26-33).
The suggestion of applying the polar silica particulates to the preformed polymer film of Bentley
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