Appeal 2006-3021
Application 09/782,337
Appellants argue that Akao does not suggest that providing a water
vapor barrier is a desired characteristic of the composition, nor does Akao
suggest modifying the laminate by providing an extended film edge (Br. 4).
These arguments are not well taken. With regard to the lack of
disclosure in Akao of water vapor barrier properties, the motivation in the
prior art to combine the references does not have to be identical to that of
Appellants to establish obviousness. See In re Kemps, 97 F.3d 1427, 1430,
40 USPQ2d 1309, 1311 (Fed. Cir. 1996). With regard to the extended edge,
the Examiner admits that Akao does not disclose or suggest this limitation
but applies Foster for the suggestion to modify the laminate of Akao
(Answer 3-4).
Appellants argue that, when considering Akao, one skilled in the art
would have no reason to look to Foster to provide the vapor barrier
properties offered by the extended edge (Br. 4). Appellants argue that no
evidence is presented by the Examiner that any savings in cost of installation
would offset the increased cost of the extended edge strip (id.). Appellants
further argue that more is required for a proper combination of references
than if the art is in the same field of endeavor (id.).
Appellants’ arguments are not persuasive. As stated above,
obviousness may be established even if the motivation to combine
references is not the same as Appellants’ motivation, i.e., the prior art need
not be combined to yield better water vapor barrier properties if there is
some other reason, suggestion or motivation for the combination. See
Kemps, supra. As correctly found by the Examiner (Answer 3-4 and 7-8),
Akao and Foster are both directed to flooring materials with good
cushioning properties, and Foster would have suggested to one of ordinary
4
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007