Appeal 2007-0618
Application 10/618,936
expectation of success. [Citation omitted].” In re Vaeck, 947 F.2d 488, 493,
20 USPQ2d 1438, 1442 (Fed. Cir. 1991).
On the record in this appeal, we find that Schilling discloses an
improved cobinder for binding pigments to the paper substrate (col. 1, ll.
54-57, and col. 2, ll. 7-10). We further find that Maruyama discloses a
similar binding composition to that of Schilling but with the addition of a
silicon-containing monomer (e.g., col. 3, ll. 2-7; col. 7, ll. 9-19). We find
that Maruyama teaches that the silicon atom in the silicon-containing
modified polyvinyl alcohol is reactive with cellulose fibers of paper and
pigments to form a firm uniform film on the paper surface (col. 9, ll. 8-26;
italics added). We therefore agree with the Examiner (Answer 4) that one of
ordinary skill in this art would have incorporated the silicon-containing
monomer of Maruyama into the cobinder composition of Schilling for its
expected advantages of binding pigments to produce improved surface
properties. We also determine that one of ordinary skill in this art would
have had a reasonable expectation of success in so incorporating the silicon-
containing monomer. We find a reasonable expectation since the two
required monomers of Schilling (e.g., vinyl acetate and 1-alkylvinyl acetate
at col. 3, ll. 23-26) are similar in structure to the vinyl ester required
monomer disclosed by Maruyama (e.g., vinyl acetate at col. 3, ll. 8-9).
For the foregoing reasons, we determine that the Examiner has
established a prima facie case of obviousness in view of the reference
evidence. Appellants assert that the Examples in the Specification show
unexpected results (Br. 3; Reply Br. 4-5). Accordingly, we must reconsider
all evidence for and against obviousness. See In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
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