Appeal No. 2003-0577
Application No. 09/194,378
person having ordinary skill in the art to extrusion
coat the film of Cardinal to the polyolefin nonwoven
webs of Brown and Weinberger. The skilled artisan
would have been motivated to laminate said film to
said webs by the reasoned expectation of utilizing
Cardinal’s film in a commercially viable product, i.e.
a diaper. The examiner notes that polyolefin is the
most commonly used polymer in the nonwoven diaper art
and, as such, is the most readily available and the
least expensive material. Polyolefins webs are also
commonly used in diapers because they provide a
desirable level of comfort and softness. The skilled
artisan would have been motivated to directly
extrusion coat said film to said web by the desire to
eliminate the need to purchase additional components,
such as adhesives.
We see no merit in the examiner’s stated position. To
properly reject claims under 35 U.S.C. § 103 as prima facie
obvious in view of a combination of prior art references, an
examiner must consider, inter alia, two factors: (1) whether the
prior art would have suggested to one of ordinary skill in the
art to make the claimed composition or carry out the claimed
process; and (2) whether the prior art would also have revealed
that, in so making or carrying out, the person of ordinary skill
would have had a reasonable expectation of success. 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)). Both the suggestion and
reasonable expectation of success must be founded in the prior
art, not in the applicants’ disclosure. Id.
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