Appeal No. 2006-1792
Application 10/329,665
Accordingly, we determine that one of ordinary skill in this art routinely following the
combined teachings of the admitted prior art, Whelan, Russell, Lyday, Brownell, Duryea,
Nanaumi and Yasuma would have reasonably arrived at the claimed invention encompassed by
claims 1 and 15, including each and every limitation thereof arranged as required therein,
without recourse to Appellants’ specification. See generally, In re Kahn, 441 F.3d 977, 985-89,
78 USPQ2d 1329, 1334-38 (Fed. Cir. 2006); In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438,
1442 (Fed. Cir. 1991) (citing In re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531
(Fed. Cir. 1988)); In re Keller, 642 F.2d 413, 425-26, 208 USPQ 871, 881-82 (CCPA 1981);
In re Corkill, 771 F.2d 1496, 1497-1500, 226 USPQ 1005, 1006-08 (Fed. Cir. 1985); In re Skoll,
523 F.2d 1392, 1397-98, 187 USPQ 481, 484-85 (CCPA 1975); In re Siebentritt, 372 F.2d 566,
567-68, 152 USPQ 618, 619 (CCPA 1967) (express suggestion to interchange methods which
achieve the same or similar results is not necessary to establish obviousness); see also In re
O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673, 1680-81 (Fed. Cir. 1988) (“Obviousness does
not require absolute predictability of success. . . . There is always at least a possibility of
unexpected results, that would then provide an objective basis for showing the invention,
although apparently obvious, was in law nonobvious. [Citations omitted.] For obviousness under
§ 103, all that is required is a reasonable expectation of success. [Citations omitted.]”).
We are not persuaded otherwise by Appellants’ arguments. Contrary to Appellants’
contentions, the Examiner has established that one of ordinary skill in this art would have
combined the references as applied on the basis the disclosures therein address the matter of
flame retardants in compositions containing phenolic resins which is the kind of resin contained
by the admitted prior art composition. See generally, Kahn, 441 F.3d at 985-89, 78 USPQ2d at
1334-38. Furthermore, the suggestion to combine and modify prior art to obtain a particular
result does not have to be predicated on solving a problem, and can result from the exercise of
ordinary skill by one in the art in order to obtain the same or similar result. See generally,
Siebentritt, 372 F.2d at 567-68, 152 USPQ at 619. With respect to claim 15, the determination
of a workable or optimum amount of an ingredient in a composition by one of ordinary skill in
the art would have been based on the contribution of the ingredient to the purpose served by the
composition as determined by routine experimentation, and not on the molecular weight of the
ingredient. See Aller, 220 F.2d at 456-58, 105 USPQ at 235-37.
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