Appeal No. 2006-2063
Application No. 10/126,019
that recited in independent claims 28 and 34 on appeal. As
specifically noted in column 11, lines 26-30, the adhesives of
Sondhi are such that “the components combined contain a total of
4.5 percent by weight of filler,” while the claims on appeal all
set forth a first part of a two-part adhesive that itself
includes “at least about 10% by weight, based on the total weight
of the first part, of a filler comprising a silica filler.” In
addition, the specification of the present application makes
clear that the adhesive as a whole includes “at least about 10%
by weight, more preferably at least about 45% by weight, and most
preferably at least about 50% by weight, based on the total
weight of the adhesive, of a base filler” (page 16). As for the
examiner’s reliance on the filler content of the light-curable
adhesive of Randklev to justify the obviousness rejection
(answer, page 6), we observe that such disclosure and teaching in
Randklev may be applicable to the light-curable adhesive (18) of
Sondhi, but we see no reason why one of ordinary skill in the art
would have relied upon such disclosure to modify the two-part
adhesive (24, 26) of Sondhi, especially since Sondhi expressly
limits filler content of the two-part adhesive to a total of 4.5%
by weight. The examiner has provided no reasoning or motivation
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