Appeal No. 95-4723
Application No. 08/028,420
Appellants state claims 23 through 38 stand or fall together (brief, page 3). We therefore limit2
our discussion to claim 23. 37 C.F.R. § 192(c)(5)(1994).
OPINION
To establish a prima facie case of obviousness, three basic criteria must be met. First, there
must be some suggestion or motivation, either in the references themselves or in the knowledge
generally available to one of ordinary skill in the art, to modify the reference or to combine reference
teachings. Second, there must be a reasonable expectation of success. Finally, the prior art reference
(or references when combined) must teach or suggest all the claim limitations. The teaching or
suggestion to make the claimed combination and the reasonable expectation of success must both be
found in the prior art, and not based on applicant's disclosure. In re Vaeck, 947 F.2d 488, 493, 20
USPQ2d 1438, 1442 (Fed. Cir. 1991).
Here, claim 23, step (c) requires grafting the pendant group, i.e., the second reaction product
formed in steps (a) and (b), onto a polymeric backbone “through the residue of the reactive compound
of step (b).” The examiner has not pointed out, and we do not find, where Ichimura discloses or
suggests this limitation of grafting the second reaction product onto a polymeric backbone “through the
residue of the reactive compound of step b.” Accordingly, we conclude that the examiner has not
established a prima facie case of obviousness.
2Appellants erroneously referred to claims 22-38 in their statement of issues and grouping of claims (brief,
page 2), as noted by the examiner (answer, page 2).
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