Appeal No. 96-2810
Application 08/017,086
Whether or not Norris and Lo are analogous prior art is a
question of fact. In re Clay, 966 F.2d 656, 658, 23 USPQ2d
1058, 1060 (Fed. Cir. 1992). We have reviewed the examiner’s
finding that Norris and Lo are analogous prior art (Ans, pp.
5-6) by
the criteria established in In re Dewinski, 796 F.2d 436, 442,
230 USPQ 313, 315 (Fed. Cir. 1986); and In re Wood, 599 F.2d
1032, 1036, 202 USPQ 171, 174 (CCPA 1979). We see no clear
error in the examiner’s finding. However, even assuming that
Norris and Lo (1) relate to the same field of endeavor, or (2)
are reasonably pertinent to the particular problem with which
the inventor is involved, we nevertheless hold that Claims 1-4
and 6-8 would not have been obvious to a person having
ordinary skill in the art under 35 U.S.C. § 103 in view of the
combined prior art teachings.
In re Dow Chemical Co., 837 F.2d 469, 5 USPQ2d 1529 (Fed.
Cir. 1988), instructs at 473, 5 USPQ2d at 1531 (citations
omitted):
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 the light of the prior
art. Both the suggestion and the expectation of success
must be founded in the prior art, not in the applicant’s
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