Appeal No. 1997-2097
Application No. 08/191,137
While the examiner suggests that a desire to avoid toxicities
that would be associated with use of copper cyanide and iron
chloride may have furnished a motivation for the proposed
modification, we observe that the examiner has not shown where
the applied references evince such a concern with the relative
toxicity of copper cyanide and iron chloride that would have
suggested the particularly proposed modification especially
given the need for specific alloy properties as set forth in
Klingenmaier.
In order for a prima facie case of obviousness of the
claimed subject matter to be established, the prior art as
applied must be such that it would have provided one of
ordinary skill in the art with both a suggestion to carry out
appellant's 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 appellant's invention would result, is not a sufficient
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