Appeal 2007-0951
Application 10/740,074
Appellants argue that one of ordinary skill in the art would not have
combined Rosenquist with Umeda because Umeda’s organopolysiloxanes
require the presence of an organoxysilyl group while Rosenquist’s cyclic
siloxanes do no contain such groups (Br. 8). Appellants also assert that there
is no motivation to combine Mark with Umeda because Mark does not
disclose flame retardancy or haze reduction (Br. 9). These arguments are
not persuasive because they do not address the Examiner’s reasons for
combining the references. For example, these arguments do not refute the
Examiner’s finding that one of ordinary skill in the art would have been
motivated to add cyclic siloxane to Umeda’s composition based on Mark’s
disclosure that cyclic siloxane provides the advantage of reducing melt
viscosity without causing degradation or an embrittling effect on the
polycarbonate. See In re Beattie, 974 F.2d 1309, 1312, 24 USPQ 1040,
1042 (Fed. Cir. 1992) ("As long as some motivation or suggestion to
combine the references is provided by the prior art taken as a whole, the law
does not require that the references be combined for the reasons
contemplated by the inventor."); In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981)(“The test for obviousness is not whether . . . the
claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.”). See also, KSR
Int’l v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1397 (2007);
In re Kahn, 441 F.3d 977, 985-89, 78 USPQ2d 1329, 1334-38 (Fed. Cir.
2006).
Appellants rely on the Declarations of Rajendra K. Singh, one of the
named inventors, in an effort to “disavow the Examiner of his notions that
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