Appeal No. 2005-1469 Page 5
Application No. 10/463,751
clastomeric insulation than conventional hydrophilic silica fillers.” (Specification,
paragraph 0015).
To hold an invention obvious in view of a combination of references, there must
be some suggestion, motivation, or teaching in the prior art that would have led a
person of ordinary skill in the art to select the reference teachings and combine them in
a way that would produce the claimed invention. See, e.g., Heidelberger
Druckmaschinen AG v. Hantscho Commercial Prods., Inc., 21 F.3d 1068, 1072, 30
USPQ2d 1377, 1379 (Fed. Cir. 1994) (When the patent invention is made by combining
known components to achieve a new system, the prior art must provide a suggestion, or
motivation to make such a combination.); Northern Telecom v. Datapoint Corp., 908
F.2d 931, 934, 15 USPQ2d 1321, 1323 (Fed. Cir. 1990) (It is insufficient to establish a
prima facie case of obviousness based on prior art references disclosing the
components of a patented device, either separately or used in other combinations; there
must be some teaching, suggestion, or incentive to make the combination made by the
inventor.); Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1044, 1051, 5 USPQ
1434, 1438 (Fed. Cir. 1988). In the present case, as indicated by Appellants, Brief page
6, that Fujii does not indicate a preference for treated or untreated silica and silane
coupling agents. The Examiner asserts that employing silane surface treated silica in a
hydrophobic polymeric matrix improves the bonding of the polymeric matrix and silica
(filler) would have been obvious to a person of ordinary skill in the art.
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