Appeal No. 1997-2376
Application 08/199,863
which would have fairly suggested this combination to one of
ordinary skill in the art.
As for the examiner’s argument regarding encapsulated
water, Hyche teaches that water is used in the method of
making the composition (col. 2, lines 36-52). Hyche, however,
does not disclose that the product is in powder form and has
about 2 to about 40 wt% of encapsulated water as required by
appellant’s claim 49.
The examiner argues that since Hyche does not disclose
any particle sizes, he would have fairly suggested to one of
ordinary skill in the art that any particle size would be
useful in his method (answer, page 7). In order for a prima
facie case of obviousness of appellant’s claimed invention 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 appellant’s 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
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