Appeal No. 1997-3874
Application 08/446,295
Suzuki discloses a primer comprised of a diene polymer
and magnesium oxide, “for preventing peeling of a
thermoplastic resin coating, formed by the fluidized-bed dip-
coating of thermoplastic resin powder, from a metal substrate”
(col. 1, lines 30-33; col. 3, lines 49-50).
The examiner argues that it would have been obvious to
one of ordinary skill in the art to substitute Taillie’s toner
for Rausing’s adhesive as a mere substitution of one known
thermoplastic adhesive for another, and to use the undercoat
materials of Schoder or Suzuki to hold the thermoplastic
adhesive particles in place (answer, pages 5-7).
In order for a prima facie case of obviousness of
appellants’ claimed invention to be established, the prior art
must be such that it would have provided one of ordinary skill
in the art with both a suggestion to carry out the appellant’s
claimed invention and a reasonable expectation of success in
doing so. See In re Dow Chemical Co., 837 F.2d 469, 473, 5
USPQ2d 1529, 1531 (Fed. Cir. 1988). “Both the suggestion and
the expectation of success must be founded in the prior art,
not in the applicant’s disclosure.” Id. The mere possibility
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