Appeal No. 2004-2293 Page 4
Application No. 09/876,778
polyols. We agree that there is no express suggestion of making the combination in Kurth. But
such an express suggestion is not required to establish a prima facie case of obviousness.
Instead, it “may come from the prior art, as filtered through the knowledge of one skilled in the
art.” Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1472, 43 USPQ2d 1481, 1489
(Fed. Cir. 1997); see also Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568,
1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996). One of ordinary skill in the art would take
known property and economic considerations into account in selecting the polyol or combination
of polyols to use. Kurth indicates that the selection of polyol does not dramatically impact either
the processing or the qualities of the end product (Kurth, col. 4, ll. 14-20). Economic factors
alone can provide motivation to make a modification. In re Thompson, 545 F.2d 1290, 1294,
192 USPQ 275, 276-77 (CCPA 1976). Moreover, selection may hinge on availability of
reactants as well. We find that there is sufficient factual evidence to support the Examiner’s
finding of a suggestion to use both types of polyols in the composition of Kurth.
Appellant argues that one of ordinary skill in the art would not know how much of the
petroleum-based polyol to include (reply Brief, pp. 2-3). We cannot agree. Under the facts of
this case, the concentration would be determinable through routine experimentation. The
evidence indicates that useful products can be obtained at a wide range of concentrations. See
Kurth at column 4, lines 17-20 which states that “[t]he qualities of the final flexible or semi-rigid
urethane foam produced using the vegetable oil are consistent with those produced using high
grade, expensive [petroleum-based] polyol.” In such a situation, the burden is on the applicant to
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