Appeal No. 2005-1492
Application No. 10/082,375
coatings thereon. Viewed from this general perspective, the fact
that Asai discloses a specific coating which is water swellable
would not have discouraged an artisan from using other coatings
(e.g., those disclosed by Maddox) for application to the
materials under consideration. Second, an obviousness conclusion
would not be forestalled even if the artisan considered himself
constrained to use only the specific water swellable coating of
Asai for application to these materials. This is because nothing
in the disclosures of either Ostrowski or Maddox require the use
of only coatings which are solvent or water based. On the other
hand, the fact that Asai expressly teaches using an electron beam
for curing his water swellable coating (e.g., see lines 30-41 in
column 8) supports the examiner’s proposed combination based upon
a reasonable expectation of success. See In re O’Farrell,
853 F.2d 894, 903, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988).
In light of the foregoing and for the reasons set forth in
the Answer, we determine that the examiner has established a
prima facie case of obviousness which the appellants have
failed to successfully rebut with argument or evidence of
nonobviousness. We hereby sustain, therefore, the examiner's
§ 103 rejections of claims 1, 2, 4, 8 and 9 based on Ostrowski in
view of Maddox and of claims 3 and 5-7 based on Ostrowski, Maddox
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