Appeal No. 2001-0278
Application 09/069,002
The Examiner has stated that it would have been obvious to one of skill in the art
at the time the invention was made to use Clark’s nondestructive evaluation method on
the bonded laminates of Kodokian because one of ordinary skill in the art would have
been motivated to reduce the chances that a defective part is used in an end product
(Examiner’s Answer, page 6, lines 15-18).
In their Reply Brief, the Appellants note that “[t]here is no indication that Clark’s
particles can heat and there is no motivation in Clark to reheat them. If the adhesive
bond is too weak, Clark needs to scrap the assembly or to break it apart and rebond.
Clark is not a thermoplastic welding process” (Reply brief, page 7, lines 22-24).
In order to establish a prima facie case of obviousness, there must be either
some suggestion or motivation to modify the references or combine reference teachings
and a reasonable expectation of success. In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d
1438, 1442 (Fed. Cir. 1991). In the absence of a reasonable expectation of success,
one is left with only an “obvious to try” situation which is not the standard of
obviousness under 35 U.S.C. § 103. See In re O’Farrell, 858 F.2d 894, 903, 7 USPQ2d
1673, 1680 (Fed. Cir. 1988).
We note that Clark’s Summary of the Invention provides that “[I]t is another
object of the present invention to provide a system and method for nondestructively
inspecting and monitoring composite materials that indicates the matrix-reinforcement
interface integrity” (Column 2, lines 47-50). It appears that both Clark and Kodokian use
the same type of ferromagnetic particles. While the Clark particles are not utilized in an
identical setting to Kodokian (adhesive bonds are not identical to thermoplastic welds),
this teaching is sufficient to bring to one of skill in the art the teaching of utilizing the
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