Appeal 2006-2516
Application 10/191,449
5 USPQ2d 1529, 1532 (Fed. Cir. 1988) ("Evidence that supports, rather than
negates, patentability must be fairly considered."). Therefore, we conclude
that the appealed claims are patentable over the combined teachings of
Kumagai and Halpern1 The rejection is reversed.
REVERSED
tf
OBLON, SPIVAK, MCCLELLAND,
MAIER & NEUSTADT, P.C.
1940 DUKE STREET
ALEXANDRIA, VA 22314
1 For the sake of completeness, we note that during oral hearing,
Appellants’ counsel also argued that the Examiner had relied upon improper
hindsight reasoning and, therefore, had not established a prima facie
showing of obviousness. In particular, it was noted that the Examiner failed
to explain why one of ordinary skill in the art, in considering the problem of
bisurea by-product formation, would have looked to Halpern which
discloses alkoxylation of PVA, acetylation and reaction with isocyanate to
produce a product which is said to be useful in the manufacture of foam
products. In addition, the Examiner did not explain why one of ordinary
skill in the art would apply Halpern’s teaching relating to polyvinyl alcohol
particle sizes to Kumagai’s ethylene/vinyl alcohol copolymer. We are in
agreement with Appellants that the only relationship between an
ethylene/vinyl alcohol copolymer and polyvinyl alcohol appears to emanate
from Appellants’ disclosure. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d
1780, 1783-74 (Fed. Cir. 1992) (“The mere fact that the prior art may be
modified in the manner suggested by the Examiner does not make the
modification obvious unless the prior art suggested the desirability of the
modification.”). However, we do not find this argument on the written
record before us.
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