Appeal 2007-2774
Application 10/285,632
[41] The Examiner does not contest Appellant's determination of the
concentration of paint in the simulated test solutions of any of
Mahoney, Forney, Gabel, Puchalski, Leitz, Artos, Merrell, Rey or
Mizuno (Answer at 11).
[42] Rather, the Examiner deems that "'teachings of the prior art as a
whole'" only require a consideration of the teachings of the applied
prior art, i.e., Knipe, Mahoney and Mizuno, and it "does not entail
consideration of all possible germane prior art, only the teachings of
the particular prior art most pertinent to the instant claims being
considered for patentability" (Answer at 11).
[43] The Examiner is of the opinion that the low paint % volumes used in
the Examples of Mahoney and Mizuno were "inherently chosen to
facilitate accurate testing and characterization" of the detackifiers
being tested in a laboratory setting and "do not state that the relative
amounts of paint to solution depict actual operating conditions"
(Answer at 11).
[44] The Examiner reiterates his position that extrapolating "Mizuno at
column 4, lines 31-35 and 48-60 [,] suggest between 1 and 50 weight
%, and hence volume %, of paint relative to wash water may be
present during actual spray painting operations" (Answer at 11).
III. Obviousness
A claimed invention is not patentable if its subject matter would have
been obvious to a person of ordinary skill in the art. 35 U.S.C. § 103(a);
KSR Int'l Co. v. Teleflex, Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007);
Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), 148 USPQ
459. Facts relevant to a determination of obviousness include (1) the scope
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