Appeal No. 95-4025
Application 07/996,968
greater the ratio of bubble surface area to volume. This
enables the oxygen to be more easily dissolved in the
material, which is the intended result.” Blough also teaches
that smaller bubbles rise to the surface more slowly than
larger bubbles (col. 4, lines 36-40). Blough discloses that
his apparatus produces bubbles having a diameter of
approximately 1 mm, which is four times that recited in
appellants’ claim 1.
The examiner argues that it would be possible to modify
the Blough process to produce a bubble size within the range
required by appellants’ claims (answer, page 4).
In order for a prima facie case of obviousness of
appellants’ claimed method 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
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