Appeal No. 2005-0836 Page 5
Application No. 09/880,292
skill in the art knew at the time the invention was made. The references serve as a spring board
from which the decision maker can use to step back in time and into the shoes of one of ordinary
skill in the art at the time of the invention. Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561,
1566-67, 1 USPQ2d 1593, 1595-96 (Fed. Cir.), cert. denied, 481 U.S. 1052 (1987). From the
prior art a certain amount of knowledge can be imputed to one of ordinary skill in the art. How
that knowledge is stated is of no matter: It need not be conveyed directly nor must it be the main
topic of discussion within a particular prior art reference. See Merck & Co v. Biocraft
Laboratories, 874 F.2d 804, 807, 10 USPQ2d 1843, 1847 (Fed. Cir. 1989) (A reference may be
relied upon for all that it would have reasonably suggested to one having ordinary skill in the art,
including non-preferred embodiments); In re Heck, 699 F.2d 1331, 1333, 216 USPQ 1038, 1039
(Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA
1968))(Use of a patent as a reference is not limited to what the patentee describes as their own
invention.). What is important is that the prior art establishes that there was a reason, suggestion
or motivation to make what is claimed and that one of ordinary skill in the art would have had a
reasonable expectation of success in so carrying it out. See In re Dow Chem., 837 F.2d 469, 473,
5 USPQ2d 1529, 1531 (Fed. Cir. 1988).
At the outset, we determine that the Examiner’s rejection is well supported by factual
evidence. The Examiner relies upon Torri for the description of an asphalt-in-water emulsion
containing clay (Answer, p. 4 as supported by Torri, p. 1, col. 2, ll. 20-26) and high specific
gravity fillers (Answer, p. 4 as supported by Torri, p. 1, col. 1, ll. 32-39). In relying upon
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