Appeal No. 1997-3334
Application No. 08/456,588
render a claim obvious. See, e.g., B.F. Goodrich Co. v.
Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582, 37 USPQ2d
1314, 1318 (Fed. Cir. 1996); In re O’Farrell, 853 F.2d 894,
902, 7 USPQ2d 1673, 1680 (Fed. Cir. 1988). “When obviousness
is based on a particular prior art reference, there must be a
showing of a suggestion or motivation to modify the teachings
of that reference. [Citation omitted].” B.F. Goodrich Co.,
supra; see also In re Mayne, 104 F.3d 1339, 1342, 41 USPQ2d
1451, 1454 (Fed. Cir. 1997)(When relying on a modification of
the prior art, it is incumbent upon the examiner to identify
some suggestion to make the modification). A “reasonable
expectation of success” is not the sole consideration in a
section 103 analysis but whether the prior art would have
suggested the proposed modification must also be considered.
See In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed.
Cir. 1991).
We determine that the examiner has not satisfied the
initial burden of establishing a case of prima facie
obviousness. The examiner has not identified any teaching,
suggestion or motivation for modifying the Platzer ‘120
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