Appeal 2006-1305
Application 10/236,270
Regarding claim 4, Appellants argue that “[t]here is no disclosure or
suggestion in the combined disclosures that would motivate the skilled
artisan to make a hot melt adhesive” with the features recited in claim 4
(Br. 7).
The Examiner counters:
[While] the specific value limitations of a property
may not be specifically disclosed in Watanabe
depending upon the interpretation of the term
“about”, in view of the [broad] disclosure of
Watanabe . . . , it would have been obvious to one
of ordinary skill in the art at the time the invention
was made to determine/optimize the amounts of
each component as a function of achieving the
desired heat and cold resistance properties as doing
so would require nothing more than ordinary skill
and routine experimentation. [Answer 10.]
We note that Appellants have not contested the Examiner’s specific
conclusion of obviousness on this issue. In addition, Watanabe’s disclosure
including Examples 1 through 3 establish as result effective variables the
claim 4 parameters of ethylene vinyl acetate amount, vinyl content, and melt
flow index. Indeed, Appellants’ claimed ranges for vinyl content and melt
flow index are overlapped by Watanabe’s disclosed ranges (Translation 6).
Thus, we agree with the Examiner’s conclusion that “it would have been
obvious to one of ordinary skill in the art at the time the invention was made
to determine/optimize the amounts of each component as a function of
achieving the desired heat and cold resistance properties” (Answer 10).
Woodruff, 919 F.2d at 1578, 16 USPQ2d at 1936-37; Boesch, 617 F.2d at
276, 205 USPQ at 219; Aller, 220 F.2d at 456, 105 USPQ at 235. Compare
Sebek, 465 F.2d at 907, 175 USPQ at 95.
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