Appeal No. 1996-4072
Application No. 08/133,283
by claim 59. In this regard, we also note that the relied on
Uchiyama reference does not disclose or suggest the use of
leather or textile materials for forming the outer layer of a
multi layer film placed in the mold, but rather specifically
calls for resinous materials and rubber as the outer layer
thereof (page 3, lines 24-59).
From the above, it is not clear how the teachings of
Uchiyama and Bree would have suggested modifications of the
process of Morello to arrive at the claimed invention herein.
Here, the most that can be concluded from the collective
teachings of the applied references is that it might have been
obvious for one of ordinary skill in the art to try selecting
a multi layer preformed laminate as the applique to be used in
the process of Morello as generally taught by Uchiyama. Of
course, it is by now well settled that such is not the proper
standard for determining obviousness under 35 U.S.C. § 103.
In this regard, our court of review has made clear that
"obvious to try" is not the correct standard for determining
obviousness under 35 U.S.C. § 103. See In re O’Farrell, 853
F.2d 894, 903-04, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988). In
our view, the examiner has not furnished an adequate
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