Appeal 2007-0618
Application 10/618,936
(6) Maruyama discloses a paper coating agent comprising silicon-
containing modified polyvinyl alcohol, and this coating agent
becomes viscous and gelled upon contact with paper, forming a
water-resistant film on the paper surface improving the surface
strength and printability (col. 2, ll. 5-19);
(7) Maruyama teaches the formation of this coating agent by
copolymerizing a vinyl ester and silicon-containing olefinic
unsaturated monomer, followed by saponification (hydrolysis)
(col. 3, ll. 2-15; see also col. 7, ll. 9-14); and
(8) Maruyama teaches that the silicon atom of the paper coating agent,
when applied to paper, greatly improves the surface properties of
paper (surface strength, printability, and barrier properties) by
reacting with the cellulose fibers and pigments, forming a firm
uniform film on the surface of the paper (col. 9, ll. 8-26).
“When it is necessary to select elements of various teachings in order
to form the claimed invention, we ascertain whether there is any suggestion
or motivation in the prior art to make the selection made by the applicant.
[Citation omitted].” In re Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885,
1888 (Fed. Cir. 1991). “Where claimed subject matter has been rejected as
obvious in view of a combination of prior art references, a proper analysis
under § 103 requires, inter alia, consideration of two factors: (1) whether the
prior art would have suggested to those of ordinary skill in the art that they
should make the claimed composition or device, or carry out the claimed
process; and (2) whether the prior art would also have revealed that in so
making or carrying out, those of ordinary skill would have a reasonable
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