Appeal No. 1997-3868 Page 9
Application No. 08/538,838
for a prima facie case of obviousness of appellants’ claimed
invention to be established, the prior art must be such that
it would have provided one of ordinary skill in the art with
both a suggestion to carry out appellants’ claimed process and
a reasonable expectation of success in doing so. See In re
Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 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 possibility that the
prior art could be modified such that appellants’ process is
carried out is not a sufficient basis for a prima facie case
of obviousness. See In re Brouwer, 77 F.3d 422, 425, 37
USPQ2d 1663, 1666 (Fed. Cir. 1996); In re Ochiai, 71 F.3d
1565, 1570, 37 USPQ2d 1127, 1131 (Fed. Cir. 1995).
Moreover, the examiner has not proven that the
additional references that are variously applied in rejecting
some of the dependent claims in each of the several separately
stated rejections cure the above-noted deficiencies.
Thus, the present record indicates that the examiner used
impermissible hindsight when rejecting the claims. See W.L.
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