Appeal No. 95-3754
Application 08/138,780
provided no evidence, however, that the product recited in appellants’ claims was
known.
In order for a prima facie case of obviousness of appellants’ claimed invention
to be established, the prior art must be such that it would have provided one of ordinary
skill in the art with both a suggestion to carry out appellants’ claimed process and a
reasonable expectation of success in doing so. See In re Vaeck, 947 F.2d 488, 493,
20 USPQ2d 1438, 1442 (Fed. Cir. 1991); In re Dow Chemical Co., 837 F.2d 469, 473,
5 USPQ2d 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.”). 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. 1996); Ochiai, 71 F.3d at 1570, 37
USPQ2d at 1131.
The examiner has not explained, and we do not independently find, where
Stemmler would have provided one of ordinary skill in the art with a suggestion to
hydrogenate the particular starting material recited in appellants’ claims such the
product recited in the claims is formed. Thus, we conclude that the examiner has not
carried his burden of establishing a prima facie case of obviousness of appellants’
claimed invention.
DECISION
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