Appeal No. 2000-1822
Application 08/679,538
arranged as required in appealed claim 1 than are the teachings of Stehling, and find that the
examiner has provided negligible evidence in support of his reasoning, thus failing to establish
that the combination of references would have placed one of ordinary skill in this art in
possession of the claimed invention at the time it was made.
In explaining the grounds of rejection, the examiner has repeatedly stated that one
consideration or another “would immediately come to mind” without identifying the person to
whom the consideration would occur, when the consideration would have occurred and the
evidence that such consideration would have in fact occurred. The standards for the “person”
and the “time” in formulating grounds of rejection under 35 U.S.C. § 103(a) is “the time the
invention was made to a person having ordinary skill in the art to which said subject matter
pertains,” which standard and supporting evidence thereof are applied according to the direction
set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966).
Therefore, on this record, we must conclude that applied references as combined by the
examiner would not have suggested to one of ordinary skill in this art at the time the claimed
invention was made that the claimed process should have been carried out, which is the initial
step required to establish a prima facie case of obviousness under § 103(a). Dow Chem., 837
F.2d at 473, 5 USPQ2d at 1531 (“The consistent criterion for determination of obviousness is
whether the prior art would have suggested to one of ordinary skill in the art that [the claimed
process] should be carried out and would have a reasonable likelihood of success, viewed in light
of the prior art. [Citations omitted] Both the suggestion and the expectation of success must be
founded in the prior art, not in the applicant’s disclosure.”).
The examiner’s decision is reversed.
Reversed
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