Appeal No. 95-4387
Application 08/021,741
in order to establish a prima facie case of obviousness, A[b]oth the suggestion and the reasonable
expectation of success must be found in the prior art and not in applicant=s disclosure.@ In re
Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991). Thus, a prima facie case of
obviousness is established by showing some that objective teaching or suggestion 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, including each and every limitation of the
claim, without recourse to the teachings in appellant's disclosure. See generally In re Oetiker,
977 F.2d 1443, 1447-48, 24 USPQ2d 1443, 1446-47 (Fed. Cir. 1992) (Nies, J., concurring).
We have carefully considered the record before us in this appeal and conclude therefrom
that the examiner has failed to make out a prima facie case of obviousness with respect to
appealed claim 27. We cannot agree with the examiner that the combination of references
provides evidence that one of ordinary skill in this art would have been motivated to employ less
than 40 percent by weight of the thermoplastic copolyester resin in the adhesive resin
compositions of Ohmae et al. in order to arrive at the invention set forth in claim 27, in view of
the following teaching in this reference:
If the [thermoplastic copolyester resin] component (A) is less than 40% by weight and
the components (B) [, an ethylene copolymer having at least one functional group
selected from, inter alia, an epoxy group or a carboxylic acid group,] and (C) [, an
optional component which is a thermoplastic resin other than the resin (A),] the adhesion
of the resulting composition to polar group-containing synthetic resins, particularly, a
soft polyvinyl chloride resin, is seriously reduced; that is, the inherent characteristic of
the component (A) is lost. [Col. 5, lines 40-46; emphasis ours.]
Thus, one of ordinary skill in this art interested in adhesive resin compositions would not have
looked to the teachings of Coran et al, which are directed to thermoplastic resin compositions, for
motivation to employ a lesser amount of the thermoplastic copolyester resin, such as 30 weight
percent as required by claim 27, in the adhesive resin compositions of Ohmae et al. because there
would have been no reasonable expectation of successfully obtaining an adhesive resin
composition in doing so. Even in view of the difference in the properties of the resin
page 2 of the answer. We refer to these references in our opinion by the name associated
therewith by the examiner.
3 The examiner has withdrawn the grounds of rejection under ' 103 based on EP= 139 or Epstein
in view of Coran et al. (answer, page 3).
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