Appeal 2006-2814
Application 10/331,582
portion of the reference which discloses that the inclusion of the cavitating
agent provides a metallized surface with a bright mirrored appearance. Nor
has the Examiner explained the basis for his conclusion that Marotta’s
disclosure of “fine spherical particles, e.g. .2 to 2 microns” (Marotta, col. 5,
ll. 59-60) renders obvious the claim limitation of a median1 particle size of
1.5 microns. See, e.g., Specification para [0048-0050].
Similarly, the Examiner argues that “[o]ne skilled in the art would
have been able to provide the core layer in US '542 with a cavitating agent
having a median particle size of 1.5 microns or less in order to produce a
metallized surface with a bright mirrored appearance, if so desired.” Answer
11. However, the Examiner has not identified any teaching or suggestion in
the prior art which would have led one of ordinary skill in the art to modify
Marks in this manner. See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d
1780, 1783-74 (Fed. Cir. 1992) (mere fact that the prior art could be
modified to achieve the claimed invention does not establish obviousness
absent a showing that the prior art suggested the desirability of the
modification). In our view, the Examiner was further obligated to explain
why one of ordinary skill in the art would have included a cavitating agent in
Marks, despite Marks’ statement that addition of a void-creating additive
adversely affects the final metal brilliance. Marks [0012]. See In re Gurley,
27 F.3d 551, 553, 31 USPQ2d 1130, 1131 (Fed.Cir.1994) ("A reference may
be said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
1Median refers to a value in an ordered set of values below and above which
there is an equal number of values or which is the arithmetic mean of the
two middle values if there is no one middle number.
8
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: September 9, 2013