Appeal No. 2005-0178
Application No. 10/091,502
use of a negative electrode material made of carbon, and having
the claimed density range, regardless of the battery chemistry
per se.
We agree with appellants’ position for the following
reasons.
The examiner’s position fails to appreciate that before an
examiner may combine the disclosures of two or more prior art
references in order to establish prima facie obviousness, there
must be some suggestion for doing so, found either in the
references themselves or in the knowledge generally available to
one of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598-99 (Fed. Cir. 1988). In the instant
case, as pointed out by appellants, because of the differences
between the secondary power source in Honbo and that of Kuruma or
the Tsushima patents, there is no motivation to modify the
density of the negative electrode material of Kuruma or the
Tsushima patents such that the density is as taught in Honbo.
Of course, it is clear that Honbo teaches a negative
electrode containing emulsive carbon as having a negative
electrode density in the range as set forth in column 3, lines
57-61. However, the test for obviousness is what the combined
teachings of the prior art references would have suggested to
those of ordinary skill in the art. In re Young, 927 F.2d 588,
591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991); In re Keller, 642
F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). The examiner’s
position fails to explain a suggestion, by the references
themselves, or in the knowledge generally available to one of
ordinary skill in the art, for modifying the density of the
negative electrode material of Kuruma or of the claims of the
Tsushima patents, so as to have the density value as taught by
Honbo.
While we observe, on page 16 of the answer, that the
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