Appeal No. 1997-1748 Page 6
Application No. 08/394,935
claimed invention to be established, the prior art as applied
must be such that it would have provided one of ordinary skill
in the art with both a suggestion to carry out appellant's
claimed invention and a reasonable expectation of success in
doing so. See In re Dow Chemical Co., 837 F.2d 469, 473, 5
USPQ2d 1529, 1531 (Fed. Cir. 1988). "Both the suggestion and
the expectation of success must be founded in the prior art,
not in the applicant's disclosure." Id. The mere possibility
that the prior art could be modified such that appellant's
invention would result, is not a sufficient basis for a prima
facie case of obviousness. See In re Brouwer, 77 F.3d 422,
425, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996); In re Ochiai, 71
F.3d 1565, 1570,
37 USPQ2d 1127, 1131 (Fed. Cir. 1995).
From our perspective, the examiner has not convincingly
explained where the motivation may be found in the combined
teachings of the references to support the alleged "functional
equivalency" as a basis for modifying the composition of
Calhoun. This motivation appears to come solely from the
description of appellant's invention in their specification.
Thus, on this record, we conclude that the examiner used
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