Appeal Number: 2005-2231 Page 5
Application Number: 09/952,931
selection of aluminum trihydrate as a filler. Tumey specifically discloses aluminum trihydrate as
a useful filler. Aluminum trihydate is ultraviolet transparent filler.
Appellants further argue that Caul does not teach the ultraviolet polymerizable
formulation. Even if that is the case, there is no reversible error because such is taught in other
relied upon prior art.
Appellants argue that Kirk and Buchanan each require two resins, including a thermally
curable resin not required by the claimed invention. But the claims do not exclude the presence
of a thermally curable resin, the claims use the transitional phrase “comprising.” The transitional
phrase “comprising” opens the claim to the inclusion of other components.
Appellants also argue that the prior art as a whole fails to suggest the desirability of
selecting ultraviolet transparent fillers, fails to appreciate its advantages and fails to teach
Appellants’ solution. These arguments are not persuasive because a prima facie case of
obviousness does not require that the applied prior art recognize and address the specidfic
problem upon which the inventor was working. In re Dillon, 919 F.2d 688, 693, 16 USPQ2d
1897, 1901-1902 (Fed. Cir. 1990)(en banc), cert denied, 500 U.S. 904 (1991). The discovery of
an additional advantage by applicant does not make the claims patentable. See In re Kronig, 539
F. 2d 1300, 1304, 190 USPQ 425, 427 (CCPA 1976) and In re Heck, 699 F.2d 1331, 1332-33,
216 USPQ 1038, 1039-40 (Fed. Cir. 1983).
Appellants argue that the combination is made based on impressible hindsight. Namely,
Appellants assert that “to support a determination of obviousness, it is essential that the prior art
teach the selection characteristics of the claimed invention, e.g., ultraviolet transparency,
otherwise one of ordinary skill in the art would not have known to make the selection of the
claimed invention.” (Brief, page 9) On the contrary, the prior art need not teach Appellants’
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007