Appeal No. 1997-0717
Application 08/405,668
(published European Patent Application) or Kodaira et al. or Ishida et al. in view of Reed et al. or
Brown et al. (answer, pages 4-5).2
It is well settled that in order to establish a prima facie case of obviousness, “[b]oth the
suggestion and the reasonable expectation of success must be founded in the prior art, not in the
applicant’s disclosure.” In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991),
citing In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988). Thus,
a prima facie case of obviousness is established by showing that some objective teaching or suggestion
in the applied prior art taken as a whole and/or knowledge generally available to one of ordinary skill in
the art would have led that person to the claimed invention as a whole, including each and every
limitation of the claims, without recourse to the teachings in appellants’ disclosure. See generally, In re
Oetiker, 977 F.2d 1443, 1447-48, 24 USPQ2d 1443, 1446-47 (Fed. Cir. 1992) (Nies, J.,
concurring); In re Laskowski, 871 F.2d 115, 10 USPQ2d 1397 (Fed. Cir. 1989); In re Fine, 837
F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Geiger, 815 F.2d 686, 2
USPQ2d 1276 (Fed. Cir. 1987).
There is no dispute that the thermoplastic compositions of claim 1 differ from the thermoplastic
compositions of the primary references in that the former contains 0.1% by weight to about 1.0% by
weight of a metal salt of an organic acid. We have carefully considered the teachings of the applied
references in light of the examiner’s position that Reed et al. and Brown et al., in disclosing the use of
fatty acid metal salts in thermoplastic compositions containing, inter alia, arylene sulfide resins and
functional polyphenylene ether resins, respectively, would have reasonably suggested to one of ordinary
skill in this art to successfully use fatty acid metal salts and the amount thereof specified in claim 1 in the
thermoplastic compositions containing both of these resins disclosed in the primary references. Based
on our review of the references, we are convinced that even though the compositions of the primary
references can be modified as proposed by the examiner, the combined teachings of the applied
references would have at best suggested that it would be obvious to try a fatty acid salt with those
compositions, which is not the standard of § 103. Indeed, with the exception of the arylene sulfide
2 The references are listed at page 3 of the answer.
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