Appeal No. 2006-2649 Page 7
Application No. 10/336,259
fourth full paragraph. Asai’s teachings are not restricted to a particular silicone
composition; Asai teaches more generally that adding alcohols or glycols solves the
problems experienced with silicone compositions. Thus, assuming that those skilled in
the art would have expected La Scola’s composition to cause the loss of electrical
conductivity discussed by Asai, they also would have expected that adding an alcohol or
glycol to the composition would overcome that problem, as taught by Asai. Therefore,
we do not agree that the references would have taught away from their combination.
Finally, Appellants argue that the prior art references do not suggest that adding
a hydroxy-functional organic compound to La Scola’s composition “would provide
improved initial contact resistance and/or volume resistivity to the composition or a
cured product thereof.” Appeal Brief, page 8. Appellants argue that therefore, the cited
references do not provide a motivation to combine or a reasonable expectation of
success. See id., pages 8 and 9.
We do not find this argument persuasive. Granted, the references do not discuss
what effect a hydroxy-functional organic compound would be expected to have on the
contact resistance or volume resistivity of a silicone composition. However, prima facie
obviousness does not require the prior art to suggest combining elements for the same
reason that Appellants combined them. See In re Dillon, 919 F.2d 688, 692-93, 16
USPQ2d 1897, 1901 (Fed. Cir. 1990) (“[I]t is not necessary in order to establish a prima
facie case of obviousness . . . that there be a suggestion in or expectation from the prior
art that the claimed compound or composition will have the same or a similar utility as
one newly discovered by applicant.”).
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