Ex parte GARRO et al. - Page 2


                Appeal No. 1997-4457                                                                                                          
                Application 08/250,617                                                                                                        

                Muraoka, Nakamura, Saitoh and Davis et  al. (Davis ‘838).2                                                                    
                         It is well settled that in order to establish a prima facie case of obviousness, “[b]oth the                         
                suggestion and the reasonable expectation of success must be founded in the prior art, not in the                             
                applicant’s disclosure.”  In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991),                              
                citing In re Dow Chemical 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, 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); Vaeck, supra; Dow Chem., supra; In re Warner, 379                                 
                F.2d 1011, 1014-17, 154 USPQ 173,      175-78 (CCPA 1967).  We agree with appellants that the                                 
                examiner has failed to carry his burden of making out a prima facie case of obviousness with respect to                       
                the claimed invention.                                                                                                        
                         The appealed claims are drawn to a method of vulcanizing a rubber composition which must                             
                comprise the specified amounts of trimercaptotriazine and a cobalt containing material, such as a cobalt                      
                salt of an organic acid, and includes at least one galvanized steel wire.  We find that Muraoka discloses                     
                a method which differs from the claimed method in that the rubber composition contains a cobalt salt of                       
                an organic acid and either or both of two sulfenamides but no trimercaptotriazine, and the wire material                      
                must be plated with a ternary alloy of copper, zinc and nickel which is exemplified as containing 60-75                       
                wt. % copper (e.g., col. 3).  The method of Nakamura uses a rubber composition which contains                                 
                trimercaptotriazine and a sulfur containing compound which can be one of the sulfenamides of Muraoka                          
                (page 6) but which differs in that no cobalt containing material is present, and the metal substrate is                       
                disclosed to “include iron, zinc, aluminum, copper, other metals, or alloys thereof” (sentence bridging                       
                                                                                                                                              
                2  Answer, pages 2-6. A copy of the translation of Nakamura prepared for the USPTO by Diplomatic                              
                Language Services, Inc. (1996) is attached to this decision. Any reference to Nakamura in our opinion                         
                is with respect to this translation.                                                                                          

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