Appeal No. 1997-2376
Application 08/199,863
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 established that Hyche would have fairly
suggested, to one of ordinary skill in the art, forming a
composition in the form of a powder having a particle size
within appellant’s recited range. The motivation relied upon
by the examiner comes solely from the description of
appellant’s invention in the specification. Thus, 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.
denied, 469 U.S. 851 (1984); In re Rothermel, 276 F.2d 393,
396, 125 USPQ 328, 331 (CCPA 1960).
The examiner argues that appellant has not demonstrated
the criticality of use of his surfactant combination and
8
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