Appeal No. 2006-2393
Application 10/439,947
5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chem. Co., 837 F.2d 469, 473,
5 USPQ2d 1529, 1531 (Fed. Cir. 1988). Indeed, in each of these grounds of rejection, the
examiner relies on the same analysis of Sarkar and of Nyssen set forth in the prior grounds of
rejection under § 102(b) which does not address whether one of ordinary skill in this art
routinely following the teachings of each of the references would have found therein the
motivation or suggestion to successfully arrive at the claimed methods encompassed by claims 2,
4 and 5 as modified by claims 7 through 9. “Even when obviousness is based on a single prior
art reference, there must be a showing of a suggestion or motivation to modify the teachings of
the reference. See B.F. Goodrich Co. v. Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582,
37 USPQ2d 1314, 1318 (Fed. Cir. 1996).” In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d
1313, 1316-17 (Fed. Cir. 2000).
Accordingly, on this record, we reverse the grounds of rejection under 35 U.S.C.
§ 103(a).
The examiner’s decision is reversed.
Remand
We remand the application to the examiner for consideration of issues raised by the
record. 37 CFR § 41.50(a)(1) (2005); Manual of Patent Examining Procedure (MPEP) § 1211
(8th ed., Rev. 3, August 2005).
Upon further prosecution of the appealed claims upon the disposition of this appeal, the
examiner should consider whether Sarkar and Nyssen, separately and/or combined together or
with any additional prior art developed by the examiner, would have reasonably suggested the
claimed invention encompassed by all of the appealed claims to one of ordinary skill in this art
within the meaning of 35 U.S.C. § 103(a).
Further, we find of record United States Patent Publication US 2002/0016405 to Friel et
al. (Friel) submitted by appellant and summarized at page 2 of the specification. There,
appellant describes Friel as disclosing “a set of prepaints sufficient to formulate at least one paint
line” but “does not disclose the use of prepaints in the form of a solid.” The examiner should
consider whether Friel alone or as combined with any additional prior art developed by the
examiner would have reasonably suggested the claimed invention encompassed by the appealed
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