Appeal No. 1998-0542 Page 7
Application No. 08/479,843
Kobayashi would have suggested appellants’ film to one of
ordinary skill in the art.
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 found in the prior
art and not in 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 or
suggestion 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,
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). This
showing can be established on similarity of product or of
process between the claimed invention and the prior art.
Here, the examiner has presented insufficient evidence or
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