Appeal No. 1996-1644
Application No. 07/933,147
Appellants do not dispute that “it would have been
obvious to one of ordinary skill in the art to use [the]
compounds [recited in claims 6 and 8] as taught by Cozzette or
[Ueno] as [the] specific coating materials in [the process] of
the primary references [e.g., Mino or Suzuki]...” Compare the
Answer, page 10 with the Brief, pages 15 and 16. Appellants
only argue that there are no suggestion and reasonable
expectation of success to arrive at the claimed subject matter
as represented by independent claim 1. See the Brief, pages
5-15 and the Reply Brief in its entirety.
As our reviewing court stated in In re Dow Chem. Co., 837
F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988):
The consistent criterion for determination of
obviousness is whether the prior art would have
suggested to one of ordinary skill in the art that
... [the claimed] process should be carried out and
would have a reasonable likelihood of success...
(Citations omitted). Both such a suggestion and the
expectation of success must be founded in the prior
art, not in the applicant’s disclosure.
We find that Mino discloses a method of forming an
organic film on the surface of glass, plastic, metals and
jewels (a diamond). See column 5, lines 5-15 and column 7,
lines 29-36. To chemically bond the organic coating on the
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