Appeal No. 2006-0317
Application 10/192,106
prima facie, the increased amount of cavitating agent would further weakened skin layer b) such
that it can be more easily disrupted and torn, which is a principal property of the skin layer b) of
Liu.
We find that the difference of about 5 weight percent between the amount of cavitating
agent in the disruptable skin layer which Liu discloses “can be . . . about 20 weight percent,” and
the lower end of the cavitating agent weight percent range for the skin layer specified in the
appealed claims of “about 25 percent by weight” would have reasonably been considered by one
of ordinary skill in this art to result in a polymeric film structure in which the skin layer can be
more easily torn in view of the teachings of Agent that the core layer containing any amount of
cavitating agent up to 50 weight percent can be torn. In re Keller, 642 F.2d 413, 425-26,
208 USPQ 871, 881-82 (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, as the examiner points out, there is no teaching in Liu that the
weight percent cavitating agent in the skin layer must not exceed about 20 weight percent, and
thus, Liu would not have taught away from an increased amount of the cavitating agent.3
See In re Gurley, 27 F.3d 551, 552-53, 31 USPQ2d 1130, 1131-32 (Fed. Cir. 1994) (“A
reference may be said to teach away when a person of ordinary skill, upon reading the reference
would be discouraged from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant. The degree of teaching away
3 It is well settled that a reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in this art would have reasonably been expected to draw
therefrom, see In re Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir.
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