Appeal No. 2006-2538 Page 5
Application No. 10/140,692
Id., page 4. See also page 6 (same reasoning relied on for combining Takigawa with
Paul or Haner).
Appellants argue that Takigawa’s adhesive is a solution acrylic adhesive, which
has properties that differ from those of the claimed hot melt adhesive. See the Appeal
Brief, pages 5-6. Appellants argue that “[t]here is no teaching in the references of
record that hot melt adhesives are prone to warpage and, as such, no motivation to
improve the balance among adhesiveness[,] tackiness and warpage resistance by
combining the Mehaffy and Takigawa references.” Id., page 6. See also page 12
(same argument with respect to the combination of Takigawa with Paul or Haner).
“[T]he Examiner bears the burden of establishing a prima facie case of
obviousness based upon the prior art. ‘[The Examiner] can satisfy this burden only by
showing some objective teaching in the prior art or that knowledge generally available to
one of ordinary skill in the art would lead that individual to combine the relevant
teachings of the references.’” In re Fritch, 972 F.2d 1260, 1265, 23 USPQ2d 1780,
1783 (Fed. Cir. 1992) (citations omitted). “When determining the patentability of a
claimed invention which combines two known elements, ‘the question is whether there
is something in the prior art as a whole to suggest the desirability, and thus the
obviousness, of making the combination.’” In re Beattie, 974 F.2d 1309, 1311-12,
24 USPQ2d 1040, 1042 (Fed. Cir. 1992).
In this case, we agree with Appellants that the examiner has not adequately
explained how the cited references would have suggested the claimed composition to a
person of ordinary skill in the art. The claimed composition is a hot melt adhesive
comprising an adhesive polymer and a modified rosin-terpene.
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