1 would know that fumed silica is an anti-tacking agent. That aside,
2 Prochnow teaches that his composition (1) attracts fish, (2) is easy to put
3 on lures (col. 1, line 46), (3) withstands repeated exposures to casting forces
4 (col. 1, line 47), and (4) resists removal when used for fishing (col. 1,
5 lines 47-48). In terms of applicant's "permanent" coating one skilled in the
6 art cannot help but see a parallel.
7 Why would one skilled in the art use the Prochnow composition on
8 the already fish attracting lure of Hastings? One skilled in the art uses
9 known compositions for their intended purpose and there is no reason
10 apparent to us why one skilled in the art would not use the Prochnow
11 composition on the Hastings lure despite Hastings' claim of fish attracting
12 properties of its lures. As in the case of the use of a mixture of two known
13 detackifiers, one skilled in the art would recognize that both the Prochnow
14 fish attractant and the Hastings fish attractant could be used in combination
15 to make a fish attracting lure.
16 It is true that the examiner's reason for combining the teachings of
17 Prochnow with those of Hastings is different than the reason applicant uses
18 CAB-O-SILŪ fumed silica to achieve detackifying. However, the reason
19 one skilled in the art would combine prior art teachings does not have to be
20 the same as the reason an applicant does so. In re Kemps, 97 F.3d 1427,
21 1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996), citing In re Dillon, 892 F.2d
22 1554, 13 USPQ2d 1337 (Fed. Cir. 1989) (en banc). The examiner combines
23 Prochnow with Hastings to achieve fish attractant properties. Since a
24 preferred thickening agent described by Prochnow is CAB-O-SILŪ fumed
25 silica, one can find on this record that the use of the Prochnow composition
26 on the Hastings lure will result in less tacky lures given the known anti-
22
Page: Previous 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 Next
Last modified: September 9, 2013