Appeal No. 2005-0528 Page 6
Application No. 10/178,143
indicates that closed-cell foams were contemplated by Dietrich. That Dietrich desired a closed-
cell foam is also supported by the fact that Dietrich discloses using the foam in chilling and
refrigerating units, in the building trade, and in the lagging of heating pipes (Dietrich, col. 4, ll.
12-20). These applications require the higher insulating values of closed-cell foams and, as
evidenced by the statements in Appellants’ “Background of the Invention,” such was understood
in the art (specification, p. 2, 8-11).
Appellants also fault the Examiner’s finding of inherency (Brief, p. 6). The Examiner,
however, indicates that the finding of inherency is directed to limitations in the dependent
claims, claims not at issue in this appeal (Answer, p. 5). This argument, therefore, is not
relevant.
Appellants also argue that Dietrich does not recognize the problem addressed by the
invention, i.e., the problem of water-blown foam shrinkage (Brief, pp. 6-7). But a lack of
discussion of Appellants’ problem does not preclude a conclusion of obviousness. In re Dillon,
919 F.2d 688, 693, 16 USPQ2d 1897, 1901-1902 (Fed. Cir. 1990)(en banc), cert. denied, 500
U.S. 904 (1991). As long as there is some reason, suggestion or motivation existing within the
prior art taken as a whole for making the combination, there is basis for a conclusion of
obviousness. In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992).
Here, there is a suggestion for making a rigid polyurethane foam using the ingredients called for
in the claim along with the stabilizer suggested by Dietrich and motivation to make the foam a
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