Appeal No. 2003-1246
Application 08/393,617
and not a universal equivalence of PbO and ZnO in all solder
glasses" (Brief at 3), the examiner explains in the Answer (at 5)
that Weaver "acknowledge[s] that PbO and ZnO are compatible with
Sb2O3 and B2O3," presumably referring to Weaver's disclosure of
employing Sb2O3 and B2O3 as optional components in his glass
compositions (col. 3, ll. 31-37). As a result, rather than
relying of Weaver as teaching the equivalence of PbO and ZnO in
all solder glasses, the examiner relies on Weaver as teaching the
equivalence of ZnO and PbO in solder glasses which may contain
Sb2O3 and B2O3, as is true of Snell's solder glass compositions.
Nevertheless, we agree with Appellants (Brief at 4) that
Weaver and Snell fail to establish a reasonable expectation of
success2 in substituting ZnO for PbO in Snell's solder glass
compositions. While Weaver gives several reasons why ZnO is
2 In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1142
(Fed. Cir. 1991), cited in the Brief at 4 n.2, held:
Where claimed subject matter has been rejected as
obvious in view of a combination of prior art references, a
proper analysis under § 103 requires, inter alia, consider-
ation of two factors: (1) whether the prior art would have
suggested to those of ordinary skill in the art that they
should make the claimed composition or device, or carry out
the claimed process; and (2) whether the prior art would
also have revealed that in so making or carrying out, those
of ordinary skill would have a reasonable expectation of
success. See In re Dow Chemical Co., 837 F.2d 469, 473,
5 USPQ2d 1529, 1531 (Fed. Cir. 1988). Both the suggestion
and the reasonable expectation of success must be founded in
the prior art, not in the applicant's disclosure.
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