Appeal No. 2006-0317
Application 10/192,106
We have again considered the arguments advanced by appellants in the brief and reply
brief to the extent that they apply to the new ground of rejection we enter here. Appellants focus
on the upper limit of the range of about 50 weight percent of cavitating agent in the core layer in
the teachings of Agent, contending that there is no reasonable motivation or expectation of
success in the combined references to modify the skin layer of Liu to contain more than about 20
weight percent of cavitating agent based on an increase in opacity, and Agent does not teach
including any cavitating agent in the skin layer (brief, pages 12-13; reply brief, page 4-6).
Appellants further submit that Liu would have taught away from including more than 20 weight
percent cavitating agent in skin layer b) by disclosing this amount as the upper end of the
cavitating agent weight percent range, and by illustrating the polymeric film structure disclosed
therein with Example 1 which “appears to contain a skin layer with 15 wt% of cavitating agent”
(brief, pages 13-14; reply brief, pages 6-7).
We agree with appellants that Agent would not have disclosed including a cavitating
agent in a skin layer. However, we find that one of ordinary skill in this art would have
recognized that the common purpose of including the cavitating agent in skin layer b) of Liu and
in the core layer of Agent is the disruption and tearing of the film, albeit in different layers.
Thus, we determine that this person would have found in the combined teaching of these
references the reasonable suggestion that additional disruption and tearing of skin layer b) of Liu
can be achieved by increasing the amount of cavitating agent as taught Agent. As we discussed
above, there is no disclosure in Liu, including the amount of cavitating agent in the skin layer of
the illustrative polymeric film of Liu Example 1, which would have taught away from increasing
the amount of cavitating agent in skin layer b). This is because Liu does not contain any
disclosure which criticizes, discredits or otherwise discourages an increase in the amount of
cavitating agent in skin layer b). See In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141,
1145-46 (Fed. Cir. 2004); Gurley, 27 F.3d at 552-53, 31 USPQ2d at 1131-32.
Accordingly, having reconsidered appellants’ arguments, including consideration of the
objective evidence in the specification in light of appellants’ arguments in the brief and reply
brief, as they pertain to the new ground of rejection under 35 U.S.C. § 103(a) which we entered
the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
- 8 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007