Appeal No. 1998-2229
Application 08/491,663
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 the appellants’
product is produced 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). The
examiner has not set forth the required explanation as to why
the applied prior art would have provided one of ordinary
skill in the art with both a suggestion to modify List’s
composition so as to arrive at the appellants’ composition,
and a reasonable expectation of success in doing so.
The appellants argue that the recitation of a product
C value between 800 and 1579 limits the product to a texture
which is not suggested by the applied prior art (brief,
page 13). The examiner argues that optimizing the texture is
within the general determination and taste of one of ordinary
skill in the art (answer, pages 6-7). The examiner, however,
has provided no reason as to why the applied prior art would
-6-6
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007