Ex parte TAYLOR et al. - Page 6




          Appeal No. 1997-2265                                                        
          Application No. 08/369,207                                                  


               The examiner’s conclusions are not supported by an                     
          appropriate analysis under 35 U.S.C.  103.  Our reviewing                  
          court has held:                                                             
                    [w]here 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. [Citation omitted].”  In re               
          Vaeck, 947 F.2d          488, 493, 20 USPQ2d 1438, 1442 (Fed.               
          Cir. 1991).                                                                 
               The examiner’s obviousness analysis is deficient since                 
          the examiner has only considered one factor, i.e., the                      
          reasonable expectation of success.  The examiner has “derived”              
          the first factor of motivation/suggestion from the second                   
          factor of reasonable expectation of success discussed in                    
          Vaeck, supra (see the Answer, page 4).  “The mere fact that                 
          the prior art could be so modified would not have made the                  
          modification obvious unless the prior art suggested the                     
          desirability of the modification. [Citations omitted].”  In re              
          Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.                   
          1984).  The showing of the teaching or motivation to combine                
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