Appeal No. 2004-2196
Application 09/902,055
appellants and the examiner. Contrary to appellants’ contention that the coating head of Ludwig
has a curved surface, we find that the contact surface 8 of coating heads 5 and 5b of the dies
illustrated in Ludwig Figs. 1 and 5 are not curved to the extent of the contact surface 8 of coating
head 5a of the die illustrated in Ludwig Figs. 2. Thus, we agree with the examiner that the
flexure of die lip 114 provided by the heating elements 136 and 138 described to provide a
uniform heated coating on a backing material by Moriarity would not interfere with the
functioning of Ludwig’s invention to provide a uniform heating coating on a backing material as
intended, as appellants argue.
Therefore, we find in the record substantial evidence supporting the examiner’s position
that one of ordinary skill in this art would have recognized from the combined teachings of
Ludwig and Moriarity that the die of Ludwig can be modified with the die lip controls taught by
Moriarity with a reasonable expectation of successfully providing a uniform coating to a backing
material, without recourse to appellants’ disclosure in the specification. See, e.g., Pro-Mold &
Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ 1626, 1629-30 (Fed. Cir.
1996) (“In this case, the reason to combine [the references] arose from the very nature of the
subject matter involved, the size of the card intended to be enclosed.”); In re Gorman, 933 F.2d
982, 986-87, 18 USPQ2d 1885, 1888-89 (Fed. Cir. 1991) (“The extent to which such suggestion
[to select elements of various teachings in order to form the claimed invention] must be explicit
in, or may be fairly inferred from, the references, is decided on the facts of each case, in light of
the prior art and its relationship to the applicant’s invention.”); In re Dow Chem. Co., 837 F.2d
469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988) (“The consistent criterion for determination of
obviousness is whether the prior art would have 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 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 (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
productive of the result sought by the applicant. [Citations omitted.].” 27 F.3d at 552, 31
USPQ2d at 1131.
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