Appeal No. 2004-2292
Application 09/747,537
useful for the same purpose, in order to form a third composition which is to be used for
the very same purpose. In re Susi, . . . 440 F.2d 442, 445, 169 USPQ 423, 426 ([CCPA]
1971); In re Crockett, . . . 279 F.2d 274, 276-77, 126 USPQ 186, 188 ([CCPA] 1960). As
this court explained in Crockett, the idea of combining them flows logically from their
having been individually taught in the prior art.”); 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.”); see also In re O’Farrell, 853 F.2d
894, 903-04, 7 USPQ2d 1673, 1680-81 (Fed. Cir. 1988) (“Obviousness does not require
absolute predictability of success. . . . There is always at least a possibility of unexpected
results, that would then provide an objective basis for showing the invention, although
apparently obvious, was in law nonobvious. [Citations omitted.] For obviousness under
§ 103, all that is required is a reasonable expectation of success. [Citations omitted.]”).
The two grounds of rejection based on the combined teachings of Schloegl and
Keller, and the two grounds of rejection based on the combined teachings of Peiffer and
Keller, stand on an entirely different factual footing because Keller discloses the addition
of a polymeric modifier for polypropylene, specifically isotactic polypropylene, to the core
or base layer of a multi-layer olefin polymer shrink film, as appellants acknowledge in the
written description of their specification as I pointed out above (see p. 24). I find in this
respect that both Schloegl (col. 3, l. 13) and Peiffer(col. 3, l. 67) disclose isotactic
polypropylene in the core or base layer multi-layer olefin polymer shrink films. Thus, I
find substantial evidence supporting the examiner’s position that the claimed multi-layer
olefin polymer shrink films would have been prima facie obvious over the applied
30
Page: Previous 20 21 22 23 24 25 26 27 28 29 30 31 32 33 34 Next
Last modified: November 3, 2007