Appeal No. 2006-2393
Application 10/439,947
mere fact that a certain thing may result from a given set of circumstances is not sufficient.
[Citations omitted.]” In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981); see
also Transclean Corp. v. Bridgewood Serv., Inc., 290 F.3d 1364, 1372-73, 62 USPQ2d 1865,
1870-71 (Fed. Cir. 2002); MEHL/Biophile Int’l Corp. v. Milgram, 192 F.3d 1362, 1365, 52
USPQ2d 1303, 1305-06 (Fed. Cir. 1999); In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949,
1950-51 (Fed. Cir. 1999); Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268-69,
20 USPQ2d 1746, 1749-50 (Fed. Cir. 1991); In re King, 801 F.2d 1324, 1326, 231 USPQ 136,
138 (Fed. Cir. 1986).
There is no dispute that each of Sarkar and Nyssen would have disclosed to one skilled in
this art paints that comprise the three ingredients which are employed as the specified ingredient
in the three prepaints specified in claimed method. However, as appellant points out, the
examiner has not identified any disclosure in the references which expressly or inherently would
have described the claimed methods encompassed by claims 2 through 6, as we have interpreted
these claims above, to this person within the meaning of § 102(b). Indeed, in support of the
contention that “at least two paint lines are inherently formed from the compositions” of the
references, the examiner merely states that this is because the references are “open to various
combinations of ingredients and is used in a variety of applications” (answer, pages 4 and 5).
Thus, the examiner has not identified in either reference substantial evidence which supports the
positions taken in the grounds of rejection under § 102(b), and accordingly, we reverse these
grounds of rejection.
The grounds of rejection under § 103(a) require different considerations. In order to
establish a prima facie case of obviousness under § 103(a), the examiner must show that some
objective teaching, suggestion or motivation in the applied prior art taken as a whole and/or
knowledge generally available to one of ordinary skill in this art would have led that person to
the claimed invention as a whole, including each and every limitation of the claims arranged as
required by the claims, without recourse to the teachings in appellant’s disclosure. See
generally, In re Kahn, 441 F.3d 977, 985-88, 78 USPQ2d 1329, 1334-37 (Fed. Cir. 2006); In re
Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool Co.
v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996);
In re Fritch, 972 F.2d at 1265-66, 23 USPQ2d at 1783-84; In re Fine, 837 F.2d 1071, 1074-76,
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