Appeal No. 2004-1950
Application 09/352,612
taught by Van Vliet, can be replaced with the spatially separated bonding lines or regions, of
about 2.5 mm in width, for such strips as taught by Kobiella in the reasonable expectation of
obtaining a mat or grid in which the strips retain substantially all of their original strength in the
unbonded or unwelded regions in the zone of overlap in the longitudinal direction, and thus
would have almost, that is, about, the same strength as the sum of the strengths of the strips or
bands located in the longitudinal direction, which is all that these claims require. See 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 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.”); 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.]”).
Indeed, Kobiella would have taught one of ordinary skill in the art that conventional
bonding or welding across the full width of the overlapped portion in the longitudinal direction
of the strip can result in reduced bond or weld strength and strip strength if the strip molecular
orientation is affected in the fused region of the overlapped strip, and Van Vliet, disclosing full
width bonding or welding for overlapped strips, as appellants correctly point out, acknowledges
that the molecular deorientation of the strip is known to be caused by bonding or welding and
must be considered in constructing the mat or web (page 5, ll. 9-16). Kobiella would have
further taught this person that a solution to this problem is a bond or weld that comprises a
plurality of fused regions at the interface of the overlapping portion in the longitudinal direction
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