Appeal No. 2004-2148
Application No. 09/362,397
Appellant’s position is not persuasive because Appellant has not
addressed the motivation presented by the Examiner for combining the
cited references. Obviousness cannot be rebutted by attacking
references individually where the rejection is based upon the teachings of
a combination of references. A reference must be read, not in isolation,
but for what it fairly teaches in combination with the prior art as a whole. In
re Merck & Co., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir. 1986).
The Examiner rejected claims 136, 141 and 142 under 35 U.S.C.
§103(a) as unpatentable over combination of Challener and Tawara. We
affirm.
Claims 136, 141 and 142 further define the subject matter of claim
107 by specifying the amount of Si, C and H components employed in the
invention. The Examiner relies on the Tawara reference for describing a
silicon carbide containing hydrogen material. (Answer, p. 17). The
Examiner acknowledges that Challener and Tawara do not teach specific
formulations of the SiCH material. However, the Examiner asserts that the
references suggest the use of other formulations. Thus, the Examiner
determined that the subject matter of appealed claims would have been
prima facie obvious to a person having ordinary skill in the art. (Answer, p.
23). We agree.
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