Appeal No. 2002-2057
Application No. 09/351,147
prima facie case of obviousness within the meaning of 35 U.S.C.
§ 103(a). In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785,
787-88 (Fed. Cir. 1984).
III. Rejection under 35 U.S.C. § 103: EP ’736 in view of Drake
As to claims 8 and 9, the examiner’s basic position is that
“[i]t would have been obvious to one having ordinary skill in
the art at the time the invention was made to have modified the
EP process by including steam with the feed in the amount
claimed as suggested by Drake because effective conversion to
olefins and aromatics would be expected.” (Answer, page 5.) We
cannot agree.
To properly reject claims under 35 U.S.C. § 103 as prima
facie obvious in view of a combination of prior art references,
an examiner must consider, inter alia, two factors: (1) whether
the prior art would have suggested to one of ordinary skill in
the art to make the claimed composition or carry out the claimed
process; and (2) whether the prior art would also have revealed
that, in so making or carrying out, the person of ordinary skill
would have had a reasonable expectation of success. In re
Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991)
(citing In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d
1529, 1531 (Fed. Cir. 1988)). Both the suggestion and
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