Appeal No. 1997-1920
Application 08/324,059
under 35 U.S.C. § 103 over Durfee in view of Kulaszewicz et al. in further view of Ripplinger as
described in the prior rejection in further view of Savovic et al.2
We find that the methods of the appealed claims differ from the individual references in the
manner pointed out by appellants in their principal brief (pages 5-14). While we agree with the
examiner that the subject matter disclosed in each of the references is related to the art of plastic
welding, that fact alone does not establish that one of ordinary skill in the art would have found in the
combined teachings thereof the reasonable suggestion to modify the abutting surfaces of the parts to be
welded by the method of Durfee (see, e.g., Fig. 10) to contain so-called “energy directors” known in
the art as evinced by the secondary references. Indeed, as appellants point out, the examiner must
provide a logical reason why one of ordinary skill in the art would have combined the teachings of the
references in the reasonable expectation of arriving at the claimed invention. The fact that the welding
surfaces of Durfee can be modified to contain “energy directors” does not alone support a prima facie
case of obviousness. See In re Laskowski, 871 F.2d 115, 10 USPQ2d 1397 (Fed. Cir. 1989).
Thus, on this record, the examiner has not carried his burden of establishing a prima facie case
of obviousness 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 this 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 Fine, 837 F.2d
1071, 1074-75, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); 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 applicant’s disclosure.”); In re Warner, 379 F.2d 1011,
1014-17, 154 USPQ 173, 176-78 (CCPA 1967).
2 The references are listed at page 2 of the answer.
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