Appeal No. 2000-0882
Application No. 08/890,582
one of 25 metals, 14 of which satisfy the claimed invention.
Accordingly, the combination would have a reasonable expectation
of success and, thus, renders the claims prima facie obvious.
See In re O'Farrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673, 1681
(Fed. Cir. 1988).
Appellants argue (Brief, page 10) that "Capote '789 does not
discuss the electromotive force of the components of the bonding
layer at all. There is no objective teaching in Capote '789 of a
conductive metal component having an EMF of less than zero." We
agree. However, the combination of Capote and Illiou would have
been obvious in view of the teachings therein, and the
combination of the two references includes adhesives with several
components that have an EMF of less than zero. A disclosure that
includes a multitude of effective adhesives does not render any
particular adhesive less obvious, particularly when the claimed
composition is used for the same purpose taught by the prior art.
See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807,
10 USPQ2d 1843, 1846 (Fed. Cir.), cert. denied, 493 U.S. 975
(1989). Further, "the mere absence from the prior art of a
teaching or a limitation recited in the patent at issue is
insufficient for a conclusion of nonobviousness." Id.
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