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.
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