Appeal No. 2001-1680
Application 08/890,471
consideration of two factors: (1) whether the prior art would
have suggested to those of ordinary skill in the art that they
should have made the claimed composition or device, or carried
out the claimed process, and (2) whether the prior art would
have revealed a reasonable expectation of success in so doing.
See In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529,
1531 (Fed. Cir. 1988). Both the suggestion and the reasonable
expectation of success must be found in the prior art not in
the applicant’s disclosure. Id.
The basis for the examiner’s prior art rejections is as
follows:
Schrader discloses all of the claimed steps except
for a drawing step providing a fan having an inlet in
communication with the interior of the housing.
Hart et al disclose a method of reducing asphalt
fumes by burning in which a blower fan is placed at the
top of the heating chamber (col. 5, lines 48-55, figure
3, reference number 130) in order to draw the burner and
air outwardly into the atmosphere (col. 1, lines 56-63).
It would have been obvious to one of ordinary skill in
the art at the time the invention was made to include the
fan of Hart et al in the apparatus of Schrader to further
promote the outward direction of the gases and burner.
Examiner’s Answer, page 3-4. Based on our review of the
entire record, we agree with appellant that the examiner’s
rejection can only be based upon improper hindsight reasoning.
Where the claimed invention combines two or more known
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