Appeal No. 2007-0056 Page 14
Application No. 09/906,511
The examiner relies on the combination of Kosako, ‘211, and ‘978 as set
forth above. Answer, page 7. The examiner recognizes, however, that the
combination of Kosako, ‘211, and ‘978, differs from claim 8 by not teaching the
specific type of insoluble particle listed therein. Id. To make up for this
deficiency, the examiner relies on Hansen. In this regard, the examiner finds that
Hansen teaches the use of polystyrene particles. Id. Based on this evidence,
the examiner reasons that it would have been prima facie obvious to a person of
ordinary skill in the art at the time the invention was made to modify the
combination of Kosako, ‘211, and ‘978 to use polystyrene particles, instead of the
latex beads of Kosako (see e.g., column 1, lines 38-39) or polystyrene latex
beads of ‘211 (see e.g., Table 1, bridging columns 15-16); and ‘978 (see e.g.,
Table 1, column 15). The evidence on this record establishes that the latex bead
component of Kosako and the polystyrene bead component of Hansen are
equivalents. Where, as here, the prior art recognizes two components to be
equivalent, an express suggestion to substitute one for another need not be
present in order to render such substitution obvious. In re Fout, 675 F.2d 297,
301, 213 USPQ 532, 536 (CCPA 1982).
In response, appellants assert that Hansen teaches away from its
combination with Kosako, ‘211, and ‘978 because Hansen teaches the use of a
different instrument, specifically a flow particle analyzer (FPA), to measure
particle size distribution. Brief, page 8. We are not persuaded by this argument.
In our opinion, that Hansen uses FPA rather than PIDS to measure particle size
distribution does not address the basis of the rejection – specifically, that the use
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