Appeal 2006-1080
Application 10/109,343
165 U.S.P.Q. 418, 420-21 (CCPA 1970) (“[A]ssertions of technical facts in
areas of esoteric technology must always be supported by citation of some
reference work” and “allegations concerning specific ‘knowledge’ of the
prior art, which might be peculiar to a particular art should also be
supported.”). With respect to Stern, I find that one of ordinary skill in the art
would more likely conclude that little, if any coating penetrates into the
board given Stern’s teaching that the formation of post perforations is
required to allow the coating to penetrate the corrugated paper. Moreover,
Stern uses “asphalt and/or other roofing adhesive” (col. 5, ll. 24-25) and
does not disclose or suggest the use of a particular bituminous composition.
In sum, while the examiner has identified various claim elements in
the prior art, he fails to provide the requisite evidence to support his reasons
for combining those elements to achieve the invention as a whole. In re
Kahn, 441 F.3d at 986, 78 U.S.P.Q. at 1335 (Fed. Cir. 2006) (citations
omitted) (“Most inventions arise from a combination of old elements and
each element may often be found in the prior art. . . . [M]ere identification
in the prior art of each element is insufficient to defeat the patentability of
the combined subject matter as a whole.”). When the Examiner does not
explain the motivation, or the suggestion or teaching, that would have led
the skilled artisan at the time of the invention to the claimed combination as
a whole, there is an inference that the Examiner relied on hindsight to
conclude that the invention was obvious. See In re Lee, 277 F.3d 1338,
1343, 61 U.S.P.Q.2d 1430, 1433 (Fed. Cir. 2002). Therefore, I would
reverse the rejections.
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