Appeal 2007-2133
Application 10/790,502
903-04, 7 USPQ2d 1673, 1680-681 (Fed. Cir. 1988) (“Obviousness does not
require absolute predictability of success. . . . For obviousness under
§ 103, all that is required is a reasonable expectation of success.” (citations
omitted).
We are not convinced otherwise by Appellants’ position. With
respect to the first ground of rejection under § 103(a), we determine that, on
this record, Appellants do not present effective argument or objective
evidence establishing that the claimed epoxy nitrile resin coated fuel cell
plates characterized by thermally curing a reactive precursor coating
composition by infrared radiation patentably distinguishes over the epoxy
nitrile resin coated fuel cell plates of Pellegri’s prepared by thermally curing
a reactive precursor coating composition of Siebert by convection (Br. 7-9).
See, e.g., In re Best, 562 F.2d 1252, 1255-256, 195 USPQ 430, 433-34
(CCPA 1977);7 see also, e.g., Thorpe, 777 F.2d at 697, 227 USPQ at 966.
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.
Dow Chem., 837 F.2d at 473, 5 USPQ2d at 1531.
6 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.
Keller, 642 F.2d at 425, 208 USPQ at 881.
7 Where, as here, the claimed and prior art products are identical or
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