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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