Appeal No. 1996-1813
Application No. 08/117,453
The Federal Circuit has delineated the standard for
establishing a prima facie case under § 103 based on a
combination of references:
Where claimed subject matter has been rejected
as obvious in view of a combination of prior art
references, a proper analysis under § 103
requires, inter alia, consideration of two
factors: (1) whether the prior art would have
suggested to those of ordinary skill in the art
that they should make the claimed composition or
device, or carry out the claimed process; and
(2) whether the prior art would also have
revealed that in so making or carrying out,
those of ordinary skill would have a reasonable
expectation of success. See In re Dow Chemical
Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531
(Fed. Cir. 1988). Both the suggestion and the
reasonable expectation of success must be
founded in the prior art, not in the applicant's
disclosure. Id.
In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed.
Cir. 1991).
Rejections over the Maggard‘785 reference
Claims 1-18 have been rejected as unpatentable under 35
U.S.C. § 103 over combination of Maggard ‘785, Inman and
Dawes. The examiner’s position may be understood from the
following excerpt from the Examiner’s Answer:
Maggard et al (‘785) disclose a system for near IR
analysis of hydrocarbons which comprise a
conventional near infrared spectrometer (see column
4, lines 55-60) and further teaches the introduction
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