Appeal No. 95-1042
Application 07/964,002
to optimize the process conditions, such as process time and/or
properties of the final product (answer, pages 10-11).
“The consistent criterion for determination of obviousness
is whether the prior art would have suggested to one of ordinary
skill in the art that this process should be carried out and
would have a reasonable likelihood of success, viewed in light of
the prior art. [citations omitted] Both the suggestion and the
expectation of success must be founded in the prior art, not in
the applicant’s disclosure.” In re Dow Chemical Co., 837 F.2d
469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988). The mere
possibility that the prior art could be modified such that
appellants’ process is carried out 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. 1995); In re Ochiai, 71
F.3d 1565, 1570, 37 USPQ2d 1127, 1131 (Fed. Cir. 1995).
The examiner has not explained why the applied prior art
would have suggested sintering an elongated green ceramic preform
formed on a fugitive support by passing it continuously through a
hot zone, and explained why the prior art would have provided
such a person with a reasonable expectation of success in doing
so. Thus, the examiner has not established a prima facie case of
obviousness of appellants’ claim 46.
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