Appeal No. 1997-2023
Application No. 08/197,497
materials of Punola. A proper analysis under § 103 requires
consideration of whether the prior art would have suggested to
those of ordinary skill in the art that they should carry out the
claimed process and whether the prior art would also have
revealed that in so carrying out, those of ordinary skill in the
art would have a reasonable expectation of success. In re Vaeck,
947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991).
For the foregoing reasons, we determine that the examiner
has failed to establish a prima facie case of obviousness in view
of the reference evidence.3 Accordingly, we cannot sustain the
examiner’s rejections under § 103.
3We have not considered Benander et al., U.S. Patent No.
4,698,244, as part of the examiner’s reference evidence because
this reference was not cited in the statement of the rejection
(see the Answer, pages 7 and 10). “Where a reference is relied
on to support a rejection, whether or not in a ‘minor capacity,’
there would appear to be no excuse for not positively including
the reference in the statement of rejection.” In re Hoch,
428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007