Appeal No. 2004-1869
Application No. 09/738,591
because Kaneko teaches applying the silica particulates to the film as a solution and moisture is
removed to adhere the silica particles to the film (Brief, p. 5; Reply Brief, p. 2). However,
Appellant does not address the finding of the Examiner with regard to Kaneko that the silica
particulates can be applied to the polymer film, in any convenient manner, including as a powder
(Answer, p. 9). It is well settled that with regard to the issue of obviousness, the combined
teachings of the prior art as a whole must be considered. EWP Corp. v Reliance Universal, Inc.,
755 F.2d 898, 907, 225 USPQ 20, 25 (Fed. Cir.), cert. denied, 474 U.S. 843 (1985). In addition,
a reference may be relied upon for all that it would have reasonably suggested to one having
ordinary skill in their art, including non-preferred embodiments. Merck & Co. v. Biocraft
Laboratories, 874 F.2d 804, 807, 10 USPQ2d 1843, 1847 (Fed. Cir. 1989). Appellant focuses on
the preferred embodiment of Kaneko of applying the silica particulates as a solution and ignores
the broader teachings of Kaneko and, additionally, ignores the teachings of McCulloch.
Appellant has failed to convince us of reversible error on the part of the Examiner.
We conclude that the Examiner has established a prima facie case of obviousness with
respect to the subject matter of claims 5 and 28 which has not been sufficiently rebutted by
Appellant.
Obviousness of Claim 7
The Examiner rejects claim 7 as obvious over Bentley in view of Kaneko and further in
view of Linford.
7
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