Appeal No. 2004-2196
Application 09/902,055
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.”); In re Siebentritt, 372 F.2d 566, 152 USPQ 618
(CCPA 1967) (express suggestion to interchange methods which achieve the same or similar
results is not necessary to establish obviousness); see also In re O’Farrell, 853 F.2d 894, 903-04,
7 USPQ2d 1673, 1680-81 (Fed. Cir. 1988) (“Obviousness does not require absolute
predictability of success. . . . There is always at least a possibility of unexpected results, that
would then provide an objective basis for showing the invention, although apparently obvious,
was in law nonobvious. [Citations omitted.] For obviousness under § 103, all that is required is a
reasonable expectation of success. [Citations omitted.]”).
We have also considered appellants’ arguments at pages 6-7 of the brief based on points
2 through 6 raised at page 5 of the brief, which the examiner finds to correspond to appealed
dependent claims 4, 5, 9, 16 and 17 and 18 (answer, pages 15-18). We note that appellants have
conceded point 5 with respect to the application of hot-melt adhesive. We agree with the
examiner’s findings and conclusions in these respects (id.). We add with respect to appellants’
contention with respect to claim 4, that Moriarity teaches away from “the coating fluid being part
of the temperature control,” that we find no teaching in this reference or in Ludwig in this
respect, see Gurley, supra; Young, supra, and in any event, the fact that hot-melt adhesive can be
applied through the dies, as appellants concede, is evidence that temperature of the die is affected
by the coating material coated in addition to the heat provided by the heating elements taught by
Moriarity. We further point out with respect to claims 17 and 18, that one of ordinary skill in this
art would have recognized that the amount of a particular material to be applied depends on the
parameters desired in the final coating product, including the g/m2 of coating required to achieve
a desired thickness, and would have applied such amounts of material as necessary to achieve
such goals. Thus, we determine that one of ordinary skill in this art would have recognized that
controlling the flow of the coating material, including adjusting that flow based on downstream
measurements as taught by Moriarity (e.g., col. 6, ll. 46-58, quoted above), is a result effective
variable regardless of the units used to express the flow of that material to achieve the desired
result. See, e.g., In re Boesch, 617 F.2d 272, 275-76, 205 USPQ 215, 218-19 (CCPA 1980)
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