Appeal No. 2002-0242
Application 09/112,364
combination of chemical structures could reasonably be expected
to be usable as a material for an organic EL device” (answer,
page 9).
In order for a prima facie case of obviousness to be
established, the teachings from the prior art itself must appear
to have suggested the claimed subject matter to one of ordinary
skill in the art. See In re Rinehart, 531 F.2d 1048, 1051, 189
USPQ 143, 147 (CCPA 1976). The mere fact that the prior art
could be modified as proposed by the examiner is not sufficient
to establish a prima facie case of obviousness. See In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir.
1992). The examiner must explain why the prior art would have
suggested to one of ordinary skill in the art the desirability of
the modification. See Fritch, 972 F.2d at 1266, 23 USPQ2d at
1783-84.
The examiner’s argument that one of ordinary skill in the
art could have made the appellants’ compounds from the compounds
of the applied prior art based upon properties such as ionization
potential and electron affinity, without undue experimentation,
does not provide the required explanation as to why the applied
prior art would have fairly suggested, to one of ordinary skill
in the art, the desirability of modifying the prior art such that
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