Appeal 2007-2602
Application 10/797,975
Appellants admit that Valyi teaches that both thermosetting and blow-
molding techniques yield similar results and either process is known to those
of ordinary skill in the art to shape an article. (Reply Br. 6.) However,
Appellants argue that Valyi is directed to a multilayer structure comprising
epoxides, and one of ordinary skill in the art would not combine the
teachings of Hagiwara and Valyi because of the differences in the properties
of the polymers. (Br. 6.) Appellants argue the Examiner presents an
"obvious to try" fact scenario, and that a finding of obvious to try is not a
proper showing for an obviousness determination. (Id.)
We are not persuaded by Appellants’ argument that there would have
been no motivation to combine the cited references. One of ordinary skill in
the art, knowing that heating a resin article containing a zeolite bacteriocide
provides greater zeolite (bacteriocidal) activity at the surface of the article,
would have been motivated to use a heating technique such as that described
in Valyi to make the article. Thermoforming techniques are known to be
acceptable for use with many different types of polymers. (E.g., Valyi, col.
5, ll. 39-44.)
Moreover, it is error to conclude that “a patent claim cannot be proved
obvious merely by showing that the combination of elements was ‘obvious
to try.’ . . . . When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable solutions, a
person of ordinary skill has good reason to pursue the known options within
his or her technical grasp. If this leads to anticipated success, it is likely the
product [is] not of innovation but of ordinary skill and common sense. In
that instance the fact that a combination was obvious to try might show that
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