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.
No time period for taking any subsequent action in connection with this appeal may be
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