Appeal No. 2001-0070
Application 08/841,209
maintain the ground of rejection. See generally, In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). This the examiner did not do.
Because the examiner has not established on the record as a whole, including in light of
appellants’ arguments, why one of ordinary skill in this art would have found in Scholl the
objective teaching, suggestion or motivation to modify the process of Scholl with the reasonable
expectation of arriving at the claimed process, it is inescapable that, on this record, the only
direction to the claimed invention resides in appellants’ specification. See Rouffet, supra
(“hindsight” is inferred when the specific understanding or principal within the knowledge of one
of ordinary skill in the art leading to the modification of the prior art in order to arrive at
appellant’s claimed invention has not been explained); In re Fritch, 972 F.2d 1260, 1266, 23
USPQ2d 1780, 1783-84 (Fed. Cir. 1992) (“The mere fact that the prior art may be modified in
the manner suggested by the Examiner does not make the modification obvious unless the prior
art suggested the desirability of the modification.”); Dow Chem., supra (“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.”);
cf. Ex parte Levengood, 28 USPQ2d 1300, 1301-02 (Bd. Pat. App. & Int. 1993) (“At best, the
examiner’s comments regarding obviousness amount to an assertion that one of ordinary skill in
the relevant art would have been able to arrive at appellant’s invention because he had the
necessary skills to carry out the requisite process steps. This is an inappropriate standard for
obviousness. . . . That which is within the capabilities of one skilled in the art is not synonymous
with obviousness. Ex parte Gerlach, 212 USPQ 471 (Bd. App. 1980).”).
The examiner’s decision is reversed.
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