Appeal 2007-0950
Application 11/099,264
985-88, 78 USPQ2d 1329, 1334-37 (Fed. Cir. 2006); In re Dow Chem. Co.,
837 F.2d 469, 473, 5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988);2 In re Keller,
642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981);3 see also In re
O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673, 1680-81 (Fed. Cir. 1988)
(“For obviousness under § 103, all that is required is a reasonable
expectation of success.” (citations omitted)).
We cannot agree with Appellants that Strutt’s specific disclosure of
introducing a suspension or slurry of nanoparticles in the fuel feed for the
plasma gun in contrast to other teachings in the reference, teaches away from
the combination thereof with Peterson. Indeed, Strutt specifically teaches
introduction into plasma even though not specifically exemplified, and one
of ordinary skill in the art would have followed knowledge in the art,
including Peterson, in practicing that teaching. See, e.g., In re Lamberti, 545
F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976) (“The fact that neither of
2 The 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.
Dow Chem., 837 F.2d at 473, 5 USPQ2d at 1531.
3 The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
Keller, 642 F.2d at 425, 208 USPQ at 881.
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