Appeal No. 2000-0441 Page 6
Application No. 08/866,942
generally available to one of ordinary skill in the art would lead that individual to
combine the relevant teachings of the references.” Id., 972 F.2d 1260, 1265, 23
USPQ2d 1780, 1783 (Fed. Cir. 1992).
The fact that the prior art could have been modified in a manner consistent with
appellants’ claims would not have made the modification obvious unless the prior art
suggested the desirability of the modification. In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984). On this record, the only reason or suggestion to
combine the references in the manner claimed comes from appellants’ specification.
Nor are we persuaded by the examiner’s assertion that “[t]he ordinary artisan
would have had an expectation of success because of the teachings” of the prior art.
Paper No. 7, page 5. An expectation of success is an element in a prima facie case of
obviousness, but it is not enough in the absence of a reason to modify the references in
the first place.
Accordingly, the rejection of the claims under 35 U.S.C. § 103 is reversed.
REVERSED
)
William F. Smith )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
)
Toni R. Scheiner ) APPEALS AND
Administrative Patent Judge )
) INTERFERENCES
)
)
)
Eric Grimes )
Administrative Patent Judge )
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