Appeal No. 2004-2257
Application No. 09/841,486
examiner then relies on Arai to teach a hydrophilic alkylene
oxide polymer and Fujita to teach a hydrophilic alkylene oxide
polymer formed from a reaction between an alkylene oxide compound
and a dicarboxylic acid compound. Id. Based on these
combinations of teachings, the examiner holds that it would have
been obvious to use the hydrophillic alkylene oxide polymer
taught by Arai and/or Fujita as the hydrophillic powder of
Suzuki. Id. According to the examiner (Id.), one of ordinary
skill in the art would have been motivated to use the
hydrophillic alkylene oxide polymer taught by Alai and/or Fujita
as the hydrophillic powder of Suzuki because of “its ready
availability and economic advantage” or because “an alkylene
oxide polymer and melamine [taught in Suzuki] have been shown in
the art to [be] recognized equivalent hydrophilic resin[s] which
[are] compatible with the non-hydrophilic resin.”
We cannot subscribe to the examiner’s position. In the
first place, the examiner does not point to any factual basis for
concluding the so-called “art . . . recognized [equivalency]” and
“economic advantage” for using the alkylene oxide polymer taught
by Arai and Fujita. See the Answer, pages 7 and 8. In the
second place, the examiner has not explained why one of ordinary
skill in the art would have been led to employ an alkylene oxide
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