Appeal No. 1999-2530
Application 08/882,809
Turning now to the ground of rejection under § 103, 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 light of the prior art. [Citations omitted] Both the suggestion and the
expectation of success must be founded 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 appellant’s 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); Oetiker,
supra; In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); Dow
Chem., 837 F.2d at 473, 5 USPQ2d at 1531-32.
We further agree with appellants that when considered in light of the written description in the
specification as interpreted by one of ordinary skill in this art, the plain language of appealed claim 1
further requires in step (b) that the mixture is a viscous, thermoplastic epoxy resin, which is the “first”
resin, and a catalyst, wherein the first resin is non-reactive with the catalyst and the catalyst is present in
an amount which catalyzes the reaction of the first resin as well as the “second” resin and polycyanate
cross-linking agent which are added as a mixture in step (d). We still further agree with appellants that
the process of Burton requires a first mixture which includes a first epoxy resin, a curing agent therefor
and no effective amount of catalyst, and a second mixture which includes a second epoxy resin, a
curing agent therefor and catalyst (e.g., col. 1, lines 47-67; col. 2, lines 58-61, col. 3, lines 51-53 and
61-64). The differences between these two mixtures of Burton and the two mixtures of appealed claim
1 are manifest from mere comparison. We find that the examiner has not explained why one of ordinary
skill in this art would have found in Burton or in the combined teachings of Burton and White any
suggestion to modify the two mixtures of Burton so as to arrive at the two mixtures of the claimed
process, and upon carefully considering these references, separately and combined, we fail to find any
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