Appeal 2006-2668
Application 10/264,763
unpreferred embodiments, must be considered.”); In re Bozek, 416 F.2d
1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Appellants contend that Boothe is directed to a UV curable liner and,
therefore, is not concerned with using the types of fillers Nelson discloses as
useful in a thermally curable liner (Br. 7). Like the Examiner, we do not
find this argument persuasive, since Boothe uses a combination of thermally
cured and UV cured materials (Answer 4, Finding of Fact 1). Boothe and
Nelson also use the same thermally curable polymers (Findings of Fact 2
and 5). See KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1742,
82 USPQ2d 1385, 1397 (2007) (“When there is a design need or market
pressure to solve a problem and there are a finite number of identified,
predictable solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads to the
anticipated success, it is likely the product . . . of ordinary skill and common
sense.”).
Appellants also argue that one of ordinary skill in the art would not
have been motivated to use Nelson’s fillers in Boothe’s compositions
because Nelson does not indicate that the disclosed fillers are suitable for
use in a UV curable liner composition (Br. 8-9). Appellants point out, for
example, that Nelson discloses that a preferred filler is titanium dioxide (Br.
9). Appellants contend that use of this filler in Boothe’s liner composition
would render the composition unsatisfactory for its intended purpose since
titanium dioxide would interfere with UV curing (Br. 9).
We likewise find this argument unpersuasive. Appellants have not
directed us to any evidence which establishes that Nelson’s fillers would
render Boothe’s liner formulation unsatisfactory for its intended purpose.
6
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: September 9, 2013