Appeal No. 1997-2271
Application 08/588,969
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 fact that the
prior art could be modified as proposed by the examiner is not
sufficient to establish a prima facie case of obviousness.
See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783
(Fed. Cir. 1992). The examiner must explain why the prior art
would have suggested to one of ordinary skill in the art the
desirability of the modification. See Fritch, 972 F.2d at
1266, 23 USPQ2d at 1783-84.
The examiner argues that one of ordinary skill in the art
would have had a reasonable expectation of success if the
teachings of the references were combined as proposed by the
examiner, but has not explained why the references would have
fairly suggested, to such a person, the desirability of the
proposed modification. The examiner argues that both an
alkoxy group and a hydroxyl group at the 2-position of a
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