Ex parte BASSET et al. - Page 3




          Appeal No. 1997-2924                                                        
          Application No. 08/320,726                                                  

          Nagao et al. (Nagao) (JP)     1-284785            Jun. 21, 1991             
               All of the appealed claims are rejected under 35 U.S.C.                
           103 as being unpatentable over Nagao and Glotin in view of                
          Fukui.                                                                      
               For the reasons which follow, we cannot sustain this                   
          rejection.                                                                  
               As argued by the appellants and recognized by the                      
          examiner, none of the applied references discloses an article               
          of manufacture which includes a weld line.  Nevertheless, the               
          examiner concludes that such an article made from a                         
          composition in accordance with the appealed claims would have               
          been suggested by these references.  This is because, in the                
          examiner’s view, the reference disclosures are generic to                   
          articles having a weld line and to compositions of the type                 
          defined by the appealed claims.  We cannot agree.                           
               It is well established that obviousness under 35 U.S.C.                
           103 requires a suggestion to modify and a reasonable                      
          expectation of success.  In re O’Farrell, 853 F.2d 894, 903-                
          04,  7 USPQ2d 1673, 1680-81 (Fed. Cir. 1988).                               
               This requirement for obviousness is not satisfied by the               
          applied references in light of their aforenoted deficiency                  

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