Appeal No. 2005-2175
Application 10/104,383
constitutes non-analogous art, because, as the examiner points out, this reference addresses the
problem of extruding a PVC composition containing a “color pigment” to form a cover of
colored PVC, which is the problem that appellants and Pollock address. See In re Clay, 966 F.2d
656, 658, 23 USPQ2d 1058, 1060-61 (Fed. Cir. 1992) (an analogous reference “is one which,
because of the matter with which it deals, logically would have commended itself to an
inventor’s attention in considering his problem”). Indeed, Pollock would have taught that the
PVC thermoplastic cover can be “colored as desired,” which we find would have led one of
ordinary skill in the art to use coloring agents customarily used to color PVC, including color
pigments, see B.F. Goodrich Co. v. Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582, 37
USPQ2d 1314, 1318 (Fed. Cir. 1996) (“When obviousness is based on a particular prior art
reference, there must be a showing of a suggestion or motivation to modify the teachings of that
reference. [Citation omitted.] This suggestion or motivation need not be expressly stated.
[Citation omitted.]”), and Pitman would have thus commended itself in this respect, the
structural difference in the substrate being covered notwithstanding. See In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981)(“The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.”).
We are also not persuaded by appellants that one of ordinary skill in this art would not
have combined Pollock and Nelson in the manner relied on by the examiner. We find no
requirement in Nelson that a decorative layer must be on the top and the bottom surface as the
illustrative embodiments do not control the teachings of a reference. See generally, In re
Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976) (“[T]he fact that a specific
[embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art,
including unpreferred embodiments, must be considered.”). We further find that the manner in
which one of ordinary skill in this art would attach extruded cores with covers thereon to each
other and to a support substrate in constructing the flooring of a deck structure does not control
whether this person would have considered the manner in which Nelson forms the extruded solid
core and cover with respect to the formation of the extruded solid core and cover by Pollock.
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