Appeal No. 2006-1644
Application No. 10/666,924
the engine described therein as being obtained by just
miniaturizing is an underestimate of the cleverness of the
engine design (brief, page 10). The disclosure in the article
that “a simplistic engine-shrinking could certainly have
produced the low emissions levels and perhaps the necessary
power output, but doubtfully could have done it at a competitive
manufacturing cost” (page 92, third full paragraph) indicates
that one of ordinary skill in the art could have made a four
stroke engine for hand held power tools, the only issue being
whether the manufacturing cost would have been competitive. The
appellants’ claims do not require a competitive manufacturing
cost.
The appellants argue that there is no showing that the mere
miniaturization of Takada’s engine necessarily will result in a
properly working engine for use on a portable, hand held power
tool (brief, pages 10-11). For a prima facie case of
obviousness to be established, all that is required is a
reasonable expectation of success, not absolute certainty. See
In re O’Farrell, 853 F.2d 894, 904, 7 USPQ2d 1673, 1681 (Fed.
Cir. 1988). Takada’s disclosure that the engine is simple and
compact (page 7) would have provided one of ordinary skill in
the art with a reasonable expectation that its size could be
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