Appeal No. 95-0966
Application 07/984,079
50 of Andoh and examiner's answer, page 2. Although the examiner recognizes that the specific
claimed reactants and products are not described in Andoh, it is the examiners position that the
invention, " would have been prima facie obvious to one of ordinary skill in the art at the time it was
made, because the prior art of record fairly discloses the process of the instant claims." See the 3
examiner's answer, page 3.
We disagree. A proper analysis of the claimed invention under § 103 requires consideration
of two factors: (1) whether the prior art would have suggested to those of ordinary skill in the art that
they should make the claimed invention; and (2) whether the prior art would have revealed that in so
doing or carrying out, those of ordinary skill would have had a reasonable expectation of success. In
re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991). Our findings indicate with
respect to the first factor, no suggestion or teaching in the prior art of Andoh for the presence of an X-
CF -Y group on the starting material and product. The absence of that suggestion in and of itself is
2
sufficient to conclude that no prima facie case of obviousness had been established. See In re Ochai
71 F.3d 1565, 1570, 37 USPQ2d 1127, 1132 (Fed. Cir. 1995).
As to the second factor, the issue is , whether the prior art would have revealed that in carrying out
the reaction with the aforesaid side chain X-CF -Y group, those of ordinary skill in the art would have
2
had a reasonable expectation of success. In that respect, the examiner has inappropriately interpreted
3Italics ours.
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