Appeal No. 96-0885
Application 08/108,932
having narrow compressed portions along its width which serve
as hinges at which the bread can be folded for forming a
sandwich (page 1, left column, lines 27-51; Figs. 5-8).
The examiner argues that incorporating Humphrey’s fold
lines into Robinson’s apple slice would have been obvious to
one of ordinary skill in the art to aid in the bending of the
apple slice (answer, page 6). The examiner does not explain,
however, where the references indicate that such an aid in
bending would be desirable or would result in a product being
produced which is shaped in the manner desired by Robinson.
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 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.” Id. The mere possibility
that the prior art could be modified such that appellants’
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