Appeal No. 1998-3251
Application 08/659,554
the application.2 We determine that the examiner has failed to make out a prima facie case in this
ground of rejection for the reasons pointed out by appellants in the brief, to which we add the following.
It is well settled that “[t]he consistent criterion for determination of obviousness is whether the
prior art would have suggested to one of ordinary skill in the art that [the claimed process] should be
carried out and would have a reasonable likelihood of success viewed in light of the prior art. [Citations
omitted] Both the suggestion and the expectation of success must be founded in the prior art, not in the
applicant’s disclosure.” In re Dow Chem. 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 appellant’s
disclosure. See generally, In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458 (Fed. Cir.
1998); 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); In re Laskowski, 871 F.2d 115, 10 USPQ2d 1397 (Fed.
Cir. 1989); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988);
Dow Chem., 837 F.2d at 473, 5 USPQ2d at 1531-32.
Appellants amended claim 1 subsequent to the final rejection to require that the high density
polyolefin component “C)” of the claimed flame resistant composition has “a melt flow rate of 0.9 or
less as measured according to ASTM D1238 at 190°C using a 2.16 kg weight” in addition to the
requirements that the same is present “from about 0.5 to about 5 parts by weight” and has “a density of
greater than 0.940 g/cm3.” As evidence of obviousness, the examiner cites Kent which discloses a
flame resistant composition that essentially differs from the claimed composition in containing 0.2 to 4
parts of an olefin homopolymer having a density of “from about 0.8 to about 0.98 and a Melt Index
determined in accordance with ASTM-D-1238 of from about 5 to about 50” (pages 5 and 9-10; see
brief, page 4). The examiner also relies on Swartzmiller which discloses a composition containing
2 The examiner refers to the Office action of November 22, 1996 (Paper No. 3) for a statement of the
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