Appeal 2007-0123
Application 10/408,939
skill in the art would have been motivated to use a combination of high and
low aspect thermally conductive filler materials in Duvall’s composition
given McCullough’s specific disclosure of using this combination and
Duvall’s teaching of using a combination of thermally conductive filler
materials, which include the same high and low aspect thermally conductive
materials used by McCullough (compare FF 2 with FF 14 and 15).
Therefore, the burden was properly shifted to Appellants to prove that
the composition of Duvall, as modified in view of McCullough, does not
necessarily or inherently meet the limitations of claim 1. See In re Best, 562
F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). Appellants’
argument that Duvall dissolves the polymer in the phase change material is
not sufficient to meet this burden. Moreover, Appellants have not presented
persuasive arguments or evidence to refute the Examiner’s explanation of
why one of ordinary skill in the art would have possessed the knowledge and
motivation to combine the teachings of McCullough with Duvall. See In re
Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1337 (Fed. Cir. 2006).
Accordingly, the rejection of claims 1-10 under 35 U.S.C. § 103(a) as
unpatentable over Duvall in view of McCullough is affirmed.
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