Appeal No. 2006-0739
Application No. 09/802,760
polyurethane elastomer described in Schlueter with the charge
control agents described in Chen and Ramos. In re Kotzab, 217
F.3d 1365, 1371, 55 USPQ2d 1313, 1317 (Fed. Cir. 2000)
(“[P]articular findings must be made as to the reason the skilled
artisan, with no knowledge of the claimed invention, would have
selected the components for combination in the manner claimed.”).
From our perspective, to modify the polyurethane elastomer
composition of Schlueter in the manner proposed by the examiner
is to destroy the invention on which Schlueter is based. Ex
parte Hartman, 186 USPQ 366, 367 (Bd. App. 1974).
On this record, we are constrained to agree with the
appellants that the examiner has not carried the burden of
establishing a prima facie case of obviousness. In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Accordingly, we reverse the examiner’s decision rejecting the
claims on appeal under § 103(a).
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