Appeal No. 1997-1383
Application No. 08/217,392
v. Shandon Inc., 997 F.2d 870, 877, 27 USPQ2d 1123, 1128 (Fed.
Cir. 1993).
Accordingly, we find the rejection of Appellants’ claims
contains sufficient motivation to combine the references
cited.
EXPECTATION OF SUCCESS
Appellants state three objects of their invention and
conclude that the Examiner’s combination does not have a
reasonable expectation of achieving these objects (citing
M.P.E.P. § 706.02(j) in their footnote 31)(Brief-page 15).
We do not agree that a reasonable expectation of success
is synonymous with achieving the objects of Appellants’
invention. Appellants have not alleged that the page
selection of Nielsen could not be adapted to work in Levine
or, vice-versa, the stacks of Levine’s pages could not be
adapted to work in Nielsen.
Appellants state "Appellant believes this dual nature
[expectation of success and motivation] is to be expected
since a reasonable expectation of success in closely related
to motivation . . . Thus, the Office Action has not made any
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