Appeal No. 2006-0445
Application 08/977,374
thermoplastic film in the reasonable expectation of successfully heating the film with infrared
radiation only at that location. 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.”); Keller, 642 F.2d at 425, 208 USPQ at 881;
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.]”). Therefore, as the examiner finds, Anderson is analogous prior art because it is
reasonably pertinent to the problem of directly heating heat shrinkable thermoplastic film as
directed by Heilman which appellant is attempting to solve. See In re Clay, 966 F.2d 656, 658,
23 USPQ2d 1058, 1060-61 (Fed. Cir. 1992). Furthermore, we find no teachings in Anderson
which would have led one of ordinary skill in this art away from applying an opaque strip to an
area of a thermoplastic film other than the area coated by Anderson. This is because Anderson
does not contain any disclosure which criticizes, discredits or otherwise discourages forming
such a strip at any other position of the film. See In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d
1141, 1145-46 (Fed. Cir. 2004).6
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in the combined teachings of Heilman, Amberg and
the “admission” documents and the combined teachings of Heilman, Amberg, the “admission”
6 See also 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
will of course depend on the particular facts; in general, a reference will teach away if it suggests
that the line of development flowing from the reference’s disclosure is unlikely to be productive
of the result sought by the applicant. [Citations omitted.]”).
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