Appeal No. 1997-2495
Application 08/200,554
page 3). We note that the examiner has identified the disclosure at page 4, line 23, through page 6, line
12; and at page 2, line 24, through page 3, line 1 of appellants’ specification as “the prior art admission”
(answer, page 4).
It is well settled that “[t]he 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 viewed in the light of the prior art.
[Citations omitted] Both the suggestion and the expectation of success must be found in the prior art,
not in the applicant’s disclosure.” In re Dow Chem. 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, suggestion or motivation 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 Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458
(Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573, 37
USPQ2d 1626, 1629-30 (Fed. Cir. 1996); 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).
The appealed claims, as represented by claim 9, encompass methods of “contact adhering”
comprising at least the steps of (1) applying a layer of “a solvent-free moisture curable adhesive”
comprising a specified “molecule,” to at least one of two “adherends,” (2) bringing the two “adherends”
into contact after the layer of adhesive begins curing and develops tack in the presence of atmospheric
moisture and (3) permitting the adhesive “to be cured in the absence of heat treatment, thereby adhering
said adherents.” Based on our review of the record in light of the examiner’s position and the analysis in
appellants’ brief and reply brief, we must agree with appellants that neither the applied references nor
“the prior art admission” disclose a process containing these three steps, the type of adhesive
notwithstanding. With respect to the required adhesives, we find that none of the applied prior art
references discloses adhesives that are defined in the appealed claims and indeed, neither Favre et al.
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