Appeal 2007-0615
Application 10/204,304
their established functions [i.e., chemical inertness and oxygen permeability
of fluorinated silicone polymers (Jolson, col. 8, ll. 53-56) ].” KSR, 127 S.
Ct. at 1740, 82 USPQ2d at 1396.
From the foregoing, we are unpersuaded by Appellant’s argument
that, since Jolson and Macur do not disclose thermal degradation or
photobleaching, there is no motivation for substituting Jolson’s fluorinated
silicone polymer or Macur’s fluorosilicone polymer for the silicone of
Lakowicz’s oxygen sensor. We understand Appellant to be arguing that
their reasons (i.e., to prevent photobleaching and thermal degradation) for
using the fluoridated silicone polymer are different than the reasons
provided by Jolson, Macur or Lakowicz. However, the reasons for
combining the prior art teachings need not be the same as applicant’s
reasons. KSR, 127 S. Ct. at 1742, 82 USPQ2d at 1397 (“[A]ny need or
problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.”) See also, In re Kemps, 97 F.3d 1427, 1430, 40
USPQ2d 1309, 1311 (Fed. Cir. 1996) (explaining reason to combine prior
art references does not have to be identical to that of the applicant to
establish obviousness).
Accordingly, the record reveals that the Examiner has established a
prima facie case of obviousness based on the teachings of the references
taken as whole. Accordingly, the burden shifted to Appellant to rebut the
Examiner’s prima facie case. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992).
Attempting to satisfy his burden, Appellant, Arie Draaijer, submitted a
Rule 132 declaration (Draaijer Declaration) on December 14, 2004 as part of
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