Appeal No. 96-3822
Application 08/143,384
Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir.
1988). The evidence relied on by the examiner as an admission,
paragraph 18 of a Ross declaration, reads as follows:
18. In numerous conversations with experts as well
as those of ordinary skill in the art, the opinion was
expressed that embossing a reduced pressure environment
technique deposited wear layer, particularly a thick layer,
would create cracking which would destroy the desired properties
of the wear layer. Therefore embossing a reduced pressure
environment technique deposited wear layer, particularly a
thick layer, was not obvious to those of skill in the art.
We agree with appellants that the Ross declaration does
not support the examiner’s conclusion of obviousness, rather,
it supports appellants’ position that those of ordinary skill
in the art believed that embossing the reduced pressure
environment technique deposited wear layer would “destroy the
desired properties of the wear layer.” See also page 5 of the
specification. As noted by appellants, a belief in the
destruction of the properties needed for a wear layer is the
antithesis of an expectation of success. Accordingly, we agree
with appellants that the claimed invention would not have been
obvious to one of ordinary skill in the art.
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