Appeal No. 2005-2175
Application 10/104,383
article thereof with a groove to accept the T-shaped molding of Haid would change the principle
of operation of the articles of Nelson. However, we found above that Haid would have taught
that the joined “planks” can be “plastic,” and determine that one of ordinary skill in this art
would have been motivated by the combined teachings of Nelson and Haid to form a plank
having a colored thermoplastic cover and a solid core having a groove on opposing sides thereof
in the reasonable expectation of joining such a plank with the T-shaped molding of Haid to take
advantage of the alternative method of joining articles to form flooring taught by Haid. See
Keller, 642 F.2d at 425, 208 USPQ at 881; 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).
Accordingly, we determine that one of ordinary skill in the art routinely following the
combined teachings of Pollock, Pitman, Nelson and Haid and of Pollock, Pitman and Nelson
would have arrived at the claimed thermoplastic flooring plank encompassed by appealed claims
67 and 68, respectively, including each and every limitation thereof arranged as required therein,
without recourse to appellants’ disclosure. 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.”); Keller, 642 F.2d at 425, 208 USPQ
at 881; Siebentritt, 372 F.2d 566, 567-68, 152 USPQ 618, 619; 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,
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