Appeal No. 2006-3179 Page 5
Application No. 10/477,069
He explains:
Ogawa teaches a method analogous to the one taught by Gupta that achieves
the surface modification explicitly desired by Gupta (i.e., the formation of a
substrate having a siloxane capped with a fluoroalkyl layer, the siloxane bonded
to the substrate surface through Si-O bonds). The method of Ogawa comprises
dipping the substrate (which has active carboxyl and/or hydroxyl groups thereon)
into a solution of the applicant’s specifically claimed fluoroalkyl silane (see Col. 5,
lines 46 - 61, Col.11, lines 5 - 60, and Col.12, lines 18 -40).
Answer, page 12.
Appellants challenge the rejection on several grounds. They argue that there
would have been no motivation to have replaced “the type of coating components used
in Gupta by a chemically totally different group of compounds” as taught in Ogawa.
Brief, page 6, ¶ 4. They contend the differences included the presence of an amide
linker in Gupta, which was missing from Ogawa, and a two-component system, rather
than the one-component system described by Ogawa. Id., page 5; page 6, ¶¶ 1 and 2.
Furthermore, Appellants argue that the references are from different fields of endeavor
and therefore not properly combinable. Id., page 5, ¶ 4.
“When patentability turns on the question of obviousness, the search for and
analysis of the prior art includes evidence relevant to the finding of whether there is a
teaching, motivation, or suggestion to select and combine the references relied on as
evidence of obviousness.” In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433
(Fed. Cir. 2002). A suggestion, teaching, or motivation to combine the relevant prior art
teachings does not have to be found explicitly in the prior art. “[T]he teaching,
motivation, or suggestion may be implicit from the prior art as a whole, rather than
expressly stated in the references. The test for an implicit showing is what the
combined teachings, knowledge of one of ordinary skill in the art, and the nature of the
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