Appeal No. 2006-0297
Application 09/861,716
The related argument of no reasonable expectation of success based on this disclosure of
Hmelar (brief, e.g., page 8; reply brief, e.g., page 3) also fails because the mere possibility of
failure does not undermine the examiner’s position. Indeed, only a reasonable expectation of
success is required, not that the precise level of efficacy be absolutely predictable, and thus, it is
sufficient here that the references clearly suggest doing what appellants have done. See In re
O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673, 1680-81 (Fed. Cir. 1988) (“Obviousness does
not require absolute predictability of success. . . . There is always at least a possibility of
unexpected results, that would then provide an objective basis for showing that the invention,
although apparently obvious, was in law nonobvious. [Citations omitted.] For obviousness under
§ 103, all that is required is a reasonable expectation of success. [Citations omitted.]”); In re
Longi, 759 F.2d 887, 897, 225 USPQ 645, 651-52 (Fed. Cir. 1985); In re Kronig, 539 F.2d 1300,
1304, 190 USPQ 425, 428, (CCPA 1976) (“[I]t is sufficient here that [the reference] clearly
suggests doing what appellants have done.”); In re Moreton, 288 F.2d 940, 943-44, 129 USPQ
288, 291 (CCPA 1961); cf. Gurley, 27 F.3d at 553, 31 USPQ2d at 1132.
The arguments advanced by appellants with respect to the combined teachings of Hmelar
and Conde ‘090 are essentially those based on Hmelar alone (brief, pages 11-12).
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in Hmelar alone and combined with Conde ‘090
with appellants’ countervailing evidence of and argument for nonobviousness and conclude that
the claimed invention encompassed by appealed claims 1 through 6 and 9 through 16 would have
been obvious as a matter of law under 35 U.S.C. § 103(a).
The examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a)(1)(iv) (2005).
AFFIRMED
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