Appeal No. 2005-0836 Page 4
Application No. 09/880,292
Appellants open their arguments by stating that the combined references, i.e., Torri,
Driesken, Woodruff, and Melvold, do not teach or suggest the claimed composition (Brief, p. 3).
In particular, according to Appellants, the references do not teach or motivate one skilled in the
art to form a composition by selecting clay as the emulsifier and selecting a nonionic surfactant
in the amount of 0.1 or greater for use in the composition (Brief, p. 3). Appellants also argue
that the references do not teach or motivate one skilled in the art to make such selections in a
composition which includes the claimed fillers or that by making such selections a composition
would result that is capable of being sprayed onto a substrate and after exposure to the conditions
of an automobile primer and paint oven, the composition being capable of forming crack and
void free coatings (Brief, pp. 3-4). Later in the Brief, Appellants review the “deficiencies” in the
teachings of each of the references and examine the motivation to combine the teachings of the
references (Brief, p. 5, ll. 6-11). In examining the motivation to combine, Appellants focus on
what the prior art patentees describe as their own inventions and argue against the combination
of those inventions (Brief, pp. 7-10; Reply Brief, pp. 4-6).
Appellants’ analysis is flawed from the standpoint that it does not sufficiently recognize
the true basis of the Examiner’s rejection. The Examiner has not attempted to bodily combine
what each of the prior art patentees disclose as their own invention, rather the Examiner has
approached the prior art from the standpoint of how it reflects what was known in the prior art.
That is a correct lens through which to evaluate the prior art in this case. The purpose of the
inclusion of prior art in an obviousness rejection is to provide evidence of what those of ordinary
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