Appeal No. 2006-0791 Ex parte Gore Enterp. Holdings, Inc.
limitation, this would be the wrong focus because the rejection posits the substitution of PTFE
for Ito's polyolefin. As Silva shows, PTFE can be processed at temperatures well over 140°C.
Ito teaches filling the membranes with resin such that the resin solution replaces the air in
the membrane. Gore cites Mallouk to argue that evaporating the solvent from the resin solution
after impregnating the membrane would necessarily create a porous membrane. Mallouk,
however, is intentionally trying to make an air permeable membrane. Mallouk's relevance if any
is to the motivation to substitute PTFE for Ito's polyolefin, not Mallouk's resin impregnation
process. To the extent that Gore is arguing that Ito's membrane is inherently air-permeable based
on Mallouk's teaching, the argument is inconsistent with what Ito says and is not otherwise
supported by actual data. In this instance, the examiner has shown enough to shift the burden of
production to Gore to show that PTFE impregnated as Ito teaches would not be filled and
thereby occluded.
Gore argues that there is no motivation to combine Ito and Silva, but the question is not
whether the references are physically combinable, but rather whether Silva provides a motivation
to substitute PTFE for Ito's UHMWPE. Ito notes that strength is a desirable attribute in a film.
Ito's objection to fluorinated films is that they are expensive. Silva, however, notes that they are
strong. It is routine in most arts to balance considerations like cost versus strength and make a
selection based on the needs of the application. Consequently, a person having ordinary skill in
the art faced with an application in which strength, reliability, or durability was sufficiently
important to justify increased expense would have been well motivated to select PTFE over
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