Appeal No. 2003-0869
Application No. 09/692,715
In order to establish a prima facie case of obviousness,
there must be either some suggestion or motivation to modify the
references or combine reference teachings and a reasonable
expectation of success. In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d
1438, 1442 (Fed. Cir. 1991). In the absence of a reasonable
expectation of success, one is left with only an “obvious to try”
situation which is not the standard of obviousness under 35 U.S.C.
§ 103. See In re O’Farrell, 858 F.2d 894, 903, 7 USPQ2d 1673,
1680 (Fed. Cir. 1988).
Absent some evidence that Audousset’s oxidation bases (e.g.,
the pyrimidine oxidation bases) would have been expected to
function with a reasonable expectation of success with Ogawa’s
coupler system, we cannot agree that a prima facie case of
obviousness has been established. Accordingly, we must reverse
this rejection.
The Rejection of Claims 61 and 62 under 35 U.S.C. § 103(a)
As this rejection relies upon the combination of Ogawa and
Audousset, we reverse this rejection for the reasons discussed
above.
The Rejection of Claim 63 under 35 U.S.C. § 103(a)
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