Appeal No. 1999-0455
Application 08/635,483
The examiner’s rejection is tantamount to a finding of
obviousness because it was “obvious to try” 40-44 gram wall
tubing. “Obvious to try” is permitted within 35 U.S.C.
§ 103 as long as the prior art provides a reasonable
expectation of success. In re O’Farrell, 853 F.2d 894, 7
USPQ2d 1673 (Fed. Cir. 1988). A reasonable expectation of
success has to be based on a limited number of possibilities
and an expectation that the modification would achieve the
results obtained. There is no evidence on this record of
whether 40-44 gram wall tubing was conventional for any
application. There is also no evidence on this record of the
known properties of 40-44 gram wall tubing or when its use
would be desirable.
The examiner’s conclusion of obviousness is based on
nothing more than the examiner’s bare opinion that it would
have been obvious to select 40-44 gram wall tubing for use in
a stethoscope. The Wells Declaration challenges the
examiner’s belief that the invention resulted from routine
experimentation.
Therefore, on this record, the examiner has failed to
establish a prima facie case of the obviousness of the claimed
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