Appeal No. 98-1001 5
Application No. 08/505,455
find that Kawasaki not only does not teach a second layer, but also fails to specifically
disclose the requirement of the claimed subject matter of, “casting a second curable
thermosetting resin onto the face layer of the first lamina to follow the relief thereof.”
See claims 1 and 10. Accordingly, Kawasaki of record alone fails to establish a prima
facie case of obviousness with respect to claims 1 through 4 and 6 through 9.
Furthermore, with respect to claims 10 through 14, and 16 through 21, the
limitations of the claimed subject matter not found in Kawasaki are not disclosed by Edge.
We find that Edge is directed to the production of a three-layer metal article and the
filing down of the second and third layers to reveal the first and second layers. See lines
40-45 and Figure 3. Although there are elements present in common with that of the
claimed subject matter, we fail to see any suggestion to the person having ordinary skill in
the art to have combined the thermosetting component of Kawasaki with the metal work
component of Edge to obtain the composition of the claimed subject matter.
It is well settled that it is the examiner who has the burden of establishing that one
of ordinary skill in the art would have found the requisite motivation and reasonable
expectation of success for the proposed modification from the applied prior art teachings.
See In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991); In re
O’Farrell, 853 F.2d 894, 902, 7 USPQ2d 1673, 1680 (Fed. Cir. 1988). The record
before us has failed to provide either the requisite motivation or a reasonable expectation
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