Appeal No. 95-4733
Application No. 08/091,030
“fused” product of appealed claim 1. The examiner has not
shown that the pigment or coating of Okai undergoes a heat
treatment similar to the heat needed to “fuse” the layers of
the product recited in appealed claim 1. See In re Best, 562
F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
The examiner also has not shown or explained why the
teachings of the applied prior art should be combined in the
proposed manner. “Obviousness cannot be established by
combining the teachings of the prior art to produce the
claimed invention, absent some teaching, suggestion or
incentive supporting the combination. [Citations omitted].”
In re Bond, 910 F.2d 831, 834, 15 USPQ2d 1566, 1568 (Fed. Cir.
1990). The examiner states that Okai adds a glass layer to a
steel substrate to impart corrosion resistance (Answer, page4
4) but no teaching, suggestion or motivation is given by the
examiner for substituting the high strength steel of Dickinson
for the substrate of Okai. The examiner does not point to any
disclosure or teaching in Dickinson regarding a corrosion
4Okai discloses that the steel substrate is selected from
steels including "high strength steel" (column 6, lines 32-
35).
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