Appeal 2006-1080
Application 10/109,343
bond between a porous substrate and bituminous coating increases as the
penetration of the asphalt into the substrate increases” (Answer 3 & 5-6).
To establish unpatentability under 35 U.S.C. § 103, the Examiner
must provide a prima facie showing that the differences between the claimed
invention and the prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made to a person having
ordinary skill in the pertinent art. Cf. Princeton Biochemicals, Inc. v.
Beckman Coulter, Inc., 411 F.3d 1332, 1337, 75 U.S.P.Q.2d 1051, 1054
(Fed.Cir.2005) (The relevant inquiry is whether “an artisan of ordinary skill
in the art at the time of the invention, confronted by the same problems as
the inventor and with no knowledge of the claimed invention, would have
selected the various elements from the prior art and combined them in the
claimed manner”). Because most things, once described, explained, and
understood, appear to be "obvious," our reviewing court requires that a
prima facie case of obviousness include evidence showing that the prior art
disclosed a motivation, teaching, or suggestion — a reason to do or make —
what an applicant now claims. See Alza Corp. v. Mylan Laboratories, Inc.,
No. 06-1019, --- F.3d ----, 2006 WL 2556356 at *3 (Fed. Cir. Sept. 6, 2006)
(“At its core, our anti-hindsight jurisprudence is a test that rests on the
unremarkable premise that legal determinations of obviousness, as with such
determinations generally, should be based on evidence rather than on mere
speculation or conjecture.”). See In re Kotzab, 217 F.3d 1365, 1371, 55
U.S.P.Q.2d 1313, 1317 (Fed.Cir.2000) (“particular findings must be made as
in blends used for paving and roofing, joint sealants, paints, and
other end uses.
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