Appeal No. 2001-1849
Application 09/138,376
fluoropolymer layer by an adhesive. The present case differs
from Leshin in that the record does not indicate that it was
known in the art that the naphthalene-containing polymers of
Kemski or Nägeli have suitable properties, i.e., the required
strength and ability to be adhesive bonded to a fluoropolymer,
for use in Kim’s multilayer film. The examiner points out
(answer, page 6) that Kim’s thermoplastic polymers include
polyesters (col. 3, lines 16-22), but has not established that
naphthalene-containing polyesters have properties which would
have led one of ordinary skill in the art to consider them to be
suitable as substitutes for the polyesters disclosed by Kim. It
is not sufficient to merely assert, as the examiner has done
(answer, page 6), that Kim’s polyesters and the naphthalene-
containing polyesters of Kemski and Nägeli are similar.
For a prima facie case of obviousness to be established, the
applied prior art must be such that it would have provided one of
ordinary skill in the art with both a motivation to carry out the
claimed invention and a reasonable expectation of success in
doing so. 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 examiner has not
provided evidence that the naphthalene-containing polyesters of
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