Ex Parte Gohr et al - Page 5

               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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