Appeal No. 1999-1367
Application 08/453,998
render the claim indefinite. At best it may raise a question of enablement. However, even
if some of the possible orientations were inoperative, the claims are not necessarily
invalid. "It is not a function of the claims to specifically exclude . . . possible inoperative
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substances...”.
We therefore conclude that, when read in light of the specification and in light of the
teachings of the prior art, the claims are not indefinite.
Obviousness
Before a conclusion of obviousness may be made based on a combination of
references, there must have been a reason, suggestion, or motivation to lead an inventor
to combine those references. Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d
1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996) (citation omitted). Moreover, the
prior art must also establish that one would have had a reasonable expectation of
achieving the present invention, i.e., a reasonable expectation of success. In re Vaeck,
947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991). Both the suggestion and
the reasonable expectation of success must be found in the prior art, not in appellants’
disclosure. In re Dow Chemical Co., 837 F.2d 469, 473,
5 USPQ2d 1529, 1531 (Fed. Cir. 1988).
4Atlas Powder Co. v. E.I. du Pont de Nemours & Co., 750 F.2d 1569, 1576-77, 224
USPQ 409, 414 (Fed. Cir. 1984).
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