Appeal No. 1996-3799
Application No. 08/252,511
organic phosphite in molten form (column 3, line 41 to column
4, line 38), there is no teaching, motivation, or suggestion
in the applied prior art to extend Neri’s melt blending
technique to a mixture of a phosphorous compound and a
hindered phenolic isocyanurate as called for in the claims on
appeal. As pointed out by the appellant (substitute appeal
brief, page 8), “[b]oth the suggestion and reasonable
expectation of success must be founded in the prior art, not
in the applicant’s disclosure.”
In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed.
Cir. 1991) (citing In re Dow Chemical Co., 837 F.2d 469, 473,
5 USPQ2d 1529, 1531 (Fed. Cir. 1988)). Here, neither the
suggestion nor the expectation of success is found in the
applied prior art.
For these reasons, we hold that the applied prior art
references do not establish a prima facie case of obviousness
against appealed independent claims 1 and 12 within the
meaning of 35 U.S.C. § 103. Since appealed claims 2 through
11 all depend from claim 1, it follows that the subject matter
of these dependent claims would also not have been obvious
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