Appeal No. 2004-1334
Application 09/526,457
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 the 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 Keller, 642 F.2d 413, 425, 208 USPQ 871, 881-82 (CCPA
1981)(“The test for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the references. Rather, the test is what
the combined teachings of the references would have suggested to those of ordinary skill in the
art.”); Harza, supra. .
Furthermore, we agree with the examiner that the use of more than one layer of fiber
glass reinforced plastic to provide the strong rigid, fire resistant shell walls of Fortune was
within the ordinary skill in this art. We further take notice that metal would also provide a
strong rigid, fire resistant shell wall. Indeed, this fact is generally notorious in the building arts
area, which is not one of esoteric technology. See In re Ahlert, 424 F.2d 1088, 1091-92, 165
USPQ 418, 420-21 (CCPA 1970). Thus, we determine that one of ordinary skill in this art
routinely following the teaching of Fortune would have used metal layers either along with or in
place of the fiber glass layers in the reasonable expectation of obtaining strong rigid, fire
resistant walls. Therefore, with respect to appealed claims 8 and 9, one of ordinary skill in this
art routinely following the teachings of Fortune would have reasonably arrived at the claimed
invention encompassed by these claims, including all of the elements thereof arranged as
required, without recourse to the disclosure in appellant’s specification. See B.F. Goodrich Co.
v. Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318 (Fed. Cir. 1996)
(“When obviousness is based on a particular prior art reference, there must be a showing of a
suggestion or motivation to modify the teachings of that reference. [Citation omitted.] This
suggestion or motivation need not be expressly stated. [Citation omitted.]”); In re Siebentritt,
372 F.2d 566, 567-68, 152 USPQ 618, 619 (CCPA 1967) (express suggestion to interchange
methods which achieve the same or similar results is not necessary to establish obviousness);
Harza, supra.
1992); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on
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