Appeal No. 1999-0130
Application No. 08/439,035
Prior to addressing the merits of the examiner's
rejections, it is important to emphasize that the initial burden
of establishing a prima case of obviousness within the meaning
of 35 U.S.C. § 103 rests on the examiner. In re Piasecki, 745
F.2d 1468, 1471-72, 223 USPQ 785, 787-88 (Fed. Cir. 1984). In
addition, to properly reject claims under 35 U.S.C. § 103 as
prima facie obvious in view of a combination of prior art
references, an examiner must consider, inter alia, two factors:
(1) whether the prior art would have suggested to one of
ordinary skill in the art to make the claimed composition or
carry out the claimed process; and (2) whether the prior art
would also have revealed that, in so making or carrying out, the
person of ordinary skill would have had a reasonable expectation
of success. 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)). Both the
suggestion and reasonable expectation of success must be founded
in the prior art, not in applicants' disclosure. Id.
In this case, we determine that the examiner has not met
the threshold burden of proof because neither the suggestion nor
the requisite reasonable expectation of success is founded in
the prior art. Id.
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007