Ex parte LASSON et al. - Page 5




          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.                     

                                           5                                           





Page:  Previous  1  2  3  4  5  6  7  Next 

Last modified: November 3, 2007