Appeal No. 2006-2810 Page 5
Application No. 10/618,111
of forming hybrid resins to the LCT resin of Smith for its expected advantage in
improving the resin’s properties. Answer, page 4, last paragraph; page 6.
Appellant argued that there was no motivation to have combined the references.
First, they contended that Cook was not enabling. Brief, page 4, i. Secondly, they
stated that LCT resins were not “commercially available at the time of Cook.” According
to Appellant, commercially availability was a requirement of Cook. Id., page 5, ii.
Finally, they argued that the combination of Smith and Cook would not result in the
claimed invention. Id., page 5, iii. An affidavit was also provided to establish
“unexpected results.” Id., page 7.
The examiner bears the initial burden of showing unpatentability. See, e.g.,
In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). In order to
establish a case of prima facie obviousness, it must be shown that all elements of a
claimed invention are found in the combination of prior art references and that the
person of ordinary skill in the art would have been motivated with a reasonable
expectation of success to have made the claimed composition or device, or carry out
the claimed process. Velander v. Garner, 348 F.3d 1359, 1363, 68 USPQ.2d 1769,
1772 (Fed. Cir. 2003).
First, we address the issue of whether all elements of the claimed invention can
be found in the prior art. On pages 3 and 5 of the Answer, the examiner identified
where each of the claimed features are disclosed in the Smith and Cook patents.
Our review of Smith and Cook, particularly the disclosures pointed to in the Answer,
confirms the examiner’s findings. Appellant did not point to any defect in the examiner’s
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