Ex parte SUZUKI et al. - Page 5


                     Appeal No. 1997-0488                                                                                                                                              
                     Application 08/306,584                                                                                                                                            

                     applicant’s disclosure.”); In re Keller, 642 F.2d 413, 425,    208 USPQ 871, 881 (CCPA 1981)                                                                      
                     (“The test for obviousness is not whether the features of a secondary reference may be bodily                                                                     
                     incorporated into the structure of the primary reference; nor is it that the claimed invention must be                                                            
                     expressly suggested in any one or all of the references. Rather, the test is what the combined teachings                                                          
                     of the references would have suggested to those of ordinary skill in the art.”); see also In re O’Farrell,                                                        
                     853 F.2d 894, 903-04, 7 USPQ2d 1673, 1680-81 (Fed. Cir. 1988) (“Obviousness does not require                                                                      
                     absolute predictability of success. . . . There is always at least a possibility of unexpected results, that                                                      
                     would then provide an objective basis for showing the invention, although apparently obvious, was in                                                              
                     law nonobvious. [Citations omitted.] For obviousness under  103, all that is required is a reasonable                                                            
                     expectation of success. [Citations omitted.]”).  We further agree with the examiner that one of ordinary                                                          
                     skill in this art would have been reasonably motivated by the combined teachings of Shibata and                                                                   
                     Tanaka to select conventional precoat and coat compositions containing different solvents even though                                                             
                     neither reference recognizes the problem of the “runaway phenomenon” advanced by appellants as their                                                              
                     reason for utilizing the same combination of compositions.  See, e.g., In re Kemps,        97 F.3d 1427,                                                          
                     1429-30, 40 USPQ2d 1309, 1311-12 (Fed. Cir, 1996); In re Dillon, 919 F.2d 688, 692-94, 16                                                                         
                     USPQ2d 1897, 1901-02 (Fed. Cir. 1990)(in banc).                                                                                                                   
                                Accordingly, based on our reconsideration of the totality of the record before us, we have                                                             
                     weighed the evidence of obviousness found in the combined teachings of Shibata and Tanaka with                                                                    
                     appellants’ countervailing evidence of and argument for nonobviousness and conclude that the claimed                                                              
                     invention encompassed by appealed claims 2 through 5 and 7 would have been obvious as a matter of                                                                 
                     law under 35 U.S.C.  103.  See generally, In re Johnson,   747 F.2d 1456, 1460, 223 USPQ 1260,                                                                   
                     1263 (Fed. Cir. 1984); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).                                                                   
                                The examiner’s decision is affirmed.                                                                                                                   





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