Appeal No. 95-5066
Serial No. 07/931,330
Therefore, we agree with appellant that Newton is not properly combinable with Hamuro as analogous
art. (Brief pages 3, 7 and 19)
In addition, we agree with appellant that the examiner has failed to provide a reason or
motivation to combine Hamuro and Newton.
As stated in In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed.
Cir. 1988):
The consistent criterion for determination of obviousness is whether the prior art
would have suggested to one of ordinary skill in the art that this process should be
carried out and would have a reasonable likelihood of success, viewed
in the light of the prior art. Both the suggestion and the expectation of success must be
founded in the prior art, not in the applicant's disclosure. [citations omitted]
The court reemphasized at 473, 5 USPQ2d at 1531:
There must be a reason or sugestion in the art for selecting the procedure used, other
than the knowledge learned from the applicant's disclosure.
It is precisely that requisite reason or suggestion to employ staggered welds to bond a stack of green-
tape foils which the combined prior art teachings lack. Hamuro does not disclose or suggest a problem
heat welding ceramic green sheets (i.e., foils) together as they are individually stacked by coincident
successive welding at the same location on each sheet using hot iron 11. The examiner has not
provided any evidence that heat welding and glue are equivalent bonding means or that paper and
green-tape foils are equivalent “sheets”. At best, Newton's disclosure might invite one of ordinary skill
in the art to try to use staggered glue deposit to bond green sheets (i.e., foils) together as they are
individually stacked. However, that is not the claimed
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