Appeal No. 2006-2810 Page 10
Application No. 10/618,111
Cook’s description of the carboxylate-alumoxane also provides the necessary
motivation. Answer, page 7, lines 9-16.
Obviousness requires motivation and an expectation of success. Appellant
hammers at the “success” prong, arguing that combining Cook with Smith
would be expected to get a resin without a crystalline structure . . . A rather
mundane analogy is that mixing milk and orange juice will be expected to get you
spoiled milk. However, under certain conditions it can get you a creamsicle.
Smith ‘984 teaches milk, Cook teaches orange juice, but the present invention
teaches a creamsicle, and that is what is claimed.
Brief, page 5, iii.
Appellant’s creamsicle example is illuminating, but leads us to the opposite
conclusion. Smith in view of Cook provides not only the milk and orange juice, but also
the recipe for making the creamsicle. Cook has numerous examples of making
polymers which contain the carboxylate-alumoxane. See e.g., Cook, column 18-column
25. Thus, we find that the “certain conditions” are taught by the prior art. Appellant has
not pointed to any feature or step in the claim that would distinguish it from the prior art
methods.
Appellant also objected to the examiner’s chemical diagrams as “impermissible
hindsight reconstruction.” Brief, paragraph spanning pages 5-6. We are not in
agreement. The chemical diagrams on pages 10-14 of the Answer convincingly
illustrate the structural similarity between the epoxy resin utilized in the Cook patent
(Fig. 10) and the liquid crystal thermoset epoxy resins in Smith. We are persuaded by
the examiner’s argument that Cook inadvertently omitted an oxygen atom in Fig. 10.
Brief, page 10, lines 5-7; Reply brief, page 3. Appellant has not told us how the
examiner is wrong, only that his “assumption is improper.” Id. In our view, the examiner
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