Appeal No. 2006-0182
Application No. 10/254,862
Propylene glycol and glycerol are described in MIYATA et al . . . .
as examples of optional wetting agents for possible use in the dispersion
(see column 4, lines 47-50 of MIYATA et al.). Therefore, the fact that two
of the wetting agents mentioned in MIYATA et al. also appear in a list of
solvents in JAIN et al. that includes the claimed solvents, in no way
suggests replacing the distinct oily substance of MIYATA et al. with any of
the solvents of JAIN et al. Indeed, even if one were to compare apples to
apples, there is no motivation to replace any of the listed optional wetting
agents of MIYATA et al. with any of the claimed solvents, notwithstanding
that those solvents appear at column 5, lines 4-15 of JAIN et al. together
with certain of the MIYATA et al. wetting agents. . . . [A] wetting agent
serves to reduce the surface tension of a liquid, so as more readily to
incorporate a suspended solid. One skilled in the art would thus not look
to JAIN, relating as it does to solutions and not dispersions, for guidance
in selecting alternative wetting agents.
In our view, the examiner has not provided sufficient evidence to show why one
of ordinary skill in the art would have substituted the particular solvents of Jain for the
wetting agents of Miyata. “In proceedings before the Patent and Trademark Office, the
Examiner bears the burden of establishing a prima facie case of obviousness based
upon the prior art. [The Examiner] can satisfy this burden only by showing some
objective teaching in the prior art or that knowledge generally available to one of
ordinary skill in the art would lead that individual to combine the relevant teachings of
the references.” In re Fritch, 972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir.
1992). An adequate showing of motivation to combine requires “evidence that a skilled
artisan, confronted with the same problems as the inventor and with no knowledge of
the claimed invention, would select the elements from the cited prior art references for
combination in the manner claimed.” Ecolochem, Inc. v. Southern Calif. Edison Co.,
227 F.3d 1361, 1375, 56 USPQ2d 1065, 1075-76 (Fed. Cir. 2000) (quoting In re
Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998)). We agree
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