Appeal No. 1999-1878 Page 6
Application No. 08/799,411
superior heat stability is known to be obtainable by doing so”
(answer, page 5) and that “[i]n so far as the initial amount
of formaldehyde emission is less than 500 ppm under the test
procedure utilized, 3 out of the 4 comparative tests presented
relate this is evidently typical of prior art formulations”
(answer, page 6).
This speculative statement of the examiner concerning the
prior art status of the comparative tests reported by
appellants at pages 20-22 of their specification is
insufficient standing by itself to establish that supposition
as fact. This is especially so given that appellants have
disputed the examiner’s allegations concerning the prior art
status of the comparative examples presented in their
specification (reply brief, pages 4 and 5). In order for a
prima facie case of obviousness of the claimed invention to be
established, the prior art as applied must be such that it
would have provided one of ordinary skill in the art with both
a suggestion to carry out appellants’ claimed invention and a
reasonable expectation of success in doing so. See In re Dow
Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed.
Cir. 1988). "Both the suggestion and the expectation of
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