Appeal No. 2002-2131
Application 09/009,597
medical Systems, Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1356, 51 USPQ2d 1415, 1420-21 (Fed.
Cir. 1999); In re Mayne, 1043 F.3d 1339, 1342, 41 USPQ2d 1451, 1454 (Fed. Cir. 1997); ACS
Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 9292, 933 (Fed. Cir.
1984); In re Keller, 642 F.2d 413, 425-26, 208 USPQ 871, 881-82 (CCPA 1981); see also 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.”).
On this record, we determine that the combination of references do not support the
examiner’s position that the (polystyrene/polybutadiene)4Si as disclosed in Abele would
inherently meet the limitations of the appealed claims with respect to molecular weight
distribution or the di-block content (answer, page 8) because there is no disclosure in any of the
references that all (polystyrene/polybutadiene)4Si radial copolymers, regardless of how produced,
would necessarily or inherently possess such characteristics. A line of reasoning based on the
references suggesting the possibility or probability that this might be so upon the selection of a
particular method of preparing such copolymers does not provide a factual foundation for a
holding of obviousness. See, e.g., In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784-85
(Fed. Cir. 1995); In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981); cf. Ex
parte Levy, 17 USPQ2d 1461, 1462-64 (Bd. Pat. App. & Int. 1990) and cases cited therein; cf.
also 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).”).
We further must agree with appellants that the examiner has not established that one of
ordinary skill in the art to which the claimed invention and Abele pertains would have combined
Abele with the disclosure in Akiyama of a dissimilar molding composition for a suggestion to
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