Ex parte SKIRHA et al. - Page 2


                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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