Appeal No. 1995-5015 Application 08/036,272 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’ process is carried out is not a sufficient basis for a prima facie case of obviousness. See In re Brouwer, 77 F.3d 422, 425, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996); In re Ochiai, 71 F.3d 1565, 1570, 37 USPQ2d 1127, 1131 (Fed. Cir. 1995). The examiner has not explained where the motivation referred to by the examiner for modifying Holmström’s method is found in the applied references. This motivation appears to come solely from the description of appellants’ invention in their specification. Thus, the record indicates that the examiner used impermissible hindsight when rejecting the claims. See W.L. Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. 5Page: Previous 1 2 3 4 5 6 7 NextLast modified: November 3, 2007