Appeal No. 2004-1784
Application No. 09/685,372
It would have been obvious to one of ordinary skill in
the art at the time of the invention to modify Yokohama
Ruber C. [sic, Yokohama Rubber Co.] to include the use
of an elastomer having the composition of about 30-70
phr polyisoprene rubber, about 70 to 30 phr of
polybutadiene rubber, 30 to 70 phr of reinforcing
carbon black in addition to a coupling agent to the
inner guide lug support layer of his advantageous
endless track in order to increase the strength of the
inner guide lug and support layer thereby reducing
shear and wear between the inner guide lug member and
the support layer [in view of Sandstrom].
We refer to the brief and reply brief and to the answer for
a complete discussion of the opposing viewpoints expressed by the
appellants and by the examiner concerning this rejection.
OPINION
For the reasons which follow, the above noted rejection
cannot be sustained.
In order to establish a prima facie case of obviousness
under 35 U.S.C. § 103(a), the references here applied by the
examiner must provide a suggestion for the modification proposed
by the examiner as well as a reasonable expectation that the
proposed modification would be successful. See In re O’Farrell,
853 F.2d 846, 850-51, 7 USPQ2d 1673, 1680-81 (Fed. Cir. 1988).
The references before us provide neither the requisite suggestion
nor the requisite reasonable expectation of success.
More specifically, the examiner acknowledges that the
Yokohama Rubber Co. reference, though disclosing an endless
4
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007