Appeal 2006-2778
Application 10/780,021
evidence on this record that suggests a structural distinction between a
coated swelling layer disclosed in the prior art and an electrostatically
deposited layer as claimed. Absent evidence to the contrary, we conclude
that depositing the swelling layer electrostatically in lieu of common coating
methods simply does not impart distinctive structural characteristics to the
final product.
We also find Appellants’ arguments regarding the alleged lack of
suggestion to utilize a specific polymer from Asai in the cable of Osornio
unavailing. Appellants argue that Asai broadly discloses a swelling layer,
polysodium acrylate homopolymer, filler, protective thermoplastic element
and various suitable materials, and that it would not have been obvious to
“pick and choose” specific materials as claimed from the “multitude” of
listed materials (Br. 10, 15-16; Reply Br. 2-8).
Merely because a prior art reference discloses a multitude of effective
compositions does not render any particular formulation less obvious.
Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807, 10 USPQ2d
1843, 1846 (Fed. Cir. 1989) (affirming obviousness of composition selected
from among more than 1200 compositions disclosed in patent). In addition,
Asai’s water-swellable compositions are intended to be applied directly to
cable components – a purpose that is commensurate with the claimed
invention. See id. (noting that the claimed composition was used for the
identical purpose taught by the prior art). Also, Asai expressly teaches that
the final formulation composition depends on a number of factors including,
among other things, the speed and extent of water swelling or blocking
response, the nature of the surfaces to which the coating is to be applied, etc.
(Asai, col. 4, ll. 11-17). Given these collective teachings, we agree with the
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