Appeal No. 1996-3195 Page 5
Application No. 08/228,086
In order for a prima facie case of obviousness of
appellants’ claimed invention to be established, the prior art
must be such that it would have provided one of ordinary skill
in the art with both a suggestion to carry out appellants’
claimed process and a reasonable expectation of success in
doing so. See In re Dow Chemical Co., 837 F.2d 469, 473, 5
USPQ2d 1529, 1531 (Fed. Cir. 1988). “Both the suggestion and
the expectation of success must be founded in the prior art,
not in the applicant’s disclosure.” Id. The mere possibility
that the prior art could be modified such that appellants’
process is carried out is not a
sufficient basis for a prima facie case of obviousness. See
In re Brouwer, 77 F.3d 422, 425, 37 USPQ2d 1663, 1666 (Fed.
Cir. 1996); In re Ochiai, 71 F.3d 1565, 1570, 37 USPQ2d 1127,
1131 (Fed. Cir. 1995).
A fundamental flaw in the stated rejection is that the
examiner has not convincingly explained how one of ordinary
skill in the art would have arrived at the claimed invention
from the teachings of the references. In this regard, claims
1 and 8 and the claims depending therefrom require a fabric
seam or method of forming the seam wherein an ultrasonic weld
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