Appeal No. 1999-1071
Application 08/453,770
not in applicant’s disclosure.”). “Obviousness does not require
absolute predictability but a reasonable expectation of success
is necessary.” In re Clinton, 527 F.2d 1226, 1228, 188 USPQ 365,
367 (CCPA 1976). See also In re O’Farrell, 853 F.2d 894, 903, 7
USPQ2d 1673, 1681 (Fed. Cir. 1988).
Here, the examiner does not rely upon any specific teachings
in the combination of references to support both the suggestion
and the expectation of success that the substitution as stated by
the examiner would provide for a lens forming composition that
forms into a substantially clear eyeglass lens by exposing the
composition to ultraviolet light for a time period of less than
one hour. Rather, the examiner concludes that substitution of
the aromatic bis(allylcarbonate) monomer of Misura in place of
the aliphatic bis(ally)carbonate monomer of Kaetsu “would have
been expected to be light polymerizable in less than one hour
because the polymerizable allylcarbonate functionality is the
same and in analogous (meth)acrylate functional compositions”.
[emphasis added] (answer, page 5). The examiner’s conclusion of
obviousness, therefore, is not based upon the suggestion and the
expectation of success founded in the prior art, but rather is
based upon the examiner’s determination that the references are
“analogous”. This is not a correct application of the law.
We therefore determine that the examiner has not set forth a
prima facie case of obviousness.
We need not discuss appellants’ rebuttal evidence in
connection with the Declaration by Dr. Buazza (Exhibit A in
appellant’s brief) in view of the determination that a prima
facie case has not be made.
Because the other rejections each involve the combination of
Kaetsu in view of Misura, and because the additional references
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