Appeal No. 1997-1991 Page 9
Application No. 08/376,270
prepolymer so as to arrive at the herein claimed subject
matter with a reasonable expectation of success.
In order for a prima facie case of obviousness of
appellants’ 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 appellants’
claimed invention 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 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).
For the foregoing reasons, we find that the examiner has
not established a prima facie case of obviousness. Because we
reverse on this basis, we need not reach the issue of the
sufficiency of the asserted secondary evidence (brief, page
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