Appeal No. 1998-2941 Page 26
Application No. 08/061,985
Reexamination Control No. 90/003,682
would have been obvious to one having ordinary skill in
the art at the time of the invention to have arrived at a
shelf life within the range of the instant claims through
routine experimental optimization. In re Boesch, 205
USPQ 215.
The appellants argue (brief, pp. 166-168) that the
examiner's unsupported belief that one of ordinary skill in
the art would have been able to vary the experiments reported
in Dunn to produce liquid whole egg products with a shelf life
of eight, twelve or sixteen or more weeks simply is not a
proper basis for a rejection under 35 U.S.C. § 103. We agree.
In that regard, evidence of a suggestion, teaching, or
motivation to modify a reference may flow from the prior art
references themselves, the knowledge of one of ordinary skill
in the art, or, in some cases, from the nature of the problem
to be solved, see Pro-Mold & Tool Co. v. Great Lakes Plastics,
Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir.
1996), Para-Ordinance Mfg. v. SGS Imports Intern., Inc., 73
F.3d 1085, 1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995),
although "the suggestion more often comes from the teachings
of the pertinent references," In re Rouffet, 149 F.3d 1350,
1355, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998). The range of
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