Appeal No. 2000-1058 Page 7
Application No. 08/673,972
must be such that it would have provided one of ordinary skill
in the art with both a suggestion to carry out appellants’
claimed invention 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. Since the examiner
has not carried the burden of particularly pointing out where
a suggestion that would have led one of ordinary skill in the
art to a process having all of the steps claimed herein is
supported by the applied references’ teachings, we reverse the
stated rejections.
CONCLUSION
The decision of the examiner to reject claims 10-18 and
21-28 under 35 U.S.C. § 103 as being unpatentable over either
Coburn or Douglas and to reject claims 10-28 under 35 U.S.C. §
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