Appeal No. 1997-4457
Application 08/250,617
Muraoka, Nakamura, Saitoh and Davis et al. (Davis ‘838).2
It is well settled that in order to establish a prima facie case of obviousness, “[b]oth the
suggestion and the reasonable expectation of success must be founded in the prior art, not in the
applicant’s disclosure.” In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991),
citing In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988). Thus,
a prima facie case of obviousness is established by showing that some objective teaching, suggestion or
motivation in the applied prior art taken as a whole and/or knowledge generally available to one of
ordinary skill in the art would have led that person to the claimed invention as a whole, including each
and every limitation of the claims, without recourse to the teachings in appellants’ disclosure. See
generally, Pro-Mold and Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573, 37 USPQ2d
1626, 1629-30 (Fed. Cir. 1996); In re Oetiker, 977 F.2d 1443, 1447-48, 24 USPQ2d 1443, 1446-
47 (Fed. Cir. 1992) (Nies, J., concurring); Vaeck, supra; Dow Chem., supra; In re Warner, 379
F.2d 1011, 1014-17, 154 USPQ 173, 175-78 (CCPA 1967). We agree with appellants that the
examiner has failed to carry his burden of making out a prima facie case of obviousness with respect to
the claimed invention.
The appealed claims are drawn to a method of vulcanizing a rubber composition which must
comprise the specified amounts of trimercaptotriazine and a cobalt containing material, such as a cobalt
salt of an organic acid, and includes at least one galvanized steel wire. We find that Muraoka discloses
a method which differs from the claimed method in that the rubber composition contains a cobalt salt of
an organic acid and either or both of two sulfenamides but no trimercaptotriazine, and the wire material
must be plated with a ternary alloy of copper, zinc and nickel which is exemplified as containing 60-75
wt. % copper (e.g., col. 3). The method of Nakamura uses a rubber composition which contains
trimercaptotriazine and a sulfur containing compound which can be one of the sulfenamides of Muraoka
(page 6) but which differs in that no cobalt containing material is present, and the metal substrate is
disclosed to “include iron, zinc, aluminum, copper, other metals, or alloys thereof” (sentence bridging
2 Answer, pages 2-6. A copy of the translation of Nakamura prepared for the USPTO by Diplomatic
Language Services, Inc. (1996) is attached to this decision. Any reference to Nakamura in our opinion
is with respect to this translation.
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