Appeal No. 1999-2816 Page 5
Application No. 08/064,052
an arterial tree, p. 481, second full paragraph).” In our opinion, the examiner’s
interpretation of this section of Bird, is incomplete. In the second full paragraph
of page 481, Bird teaches:
The low platelet activation seen with DPPC is important because
platelet activation is thought to be the primary event initiating
thrombosis of grafts in the arterial tree. That this benefit is also
seen with DAPC, a polymer containing PC, has exciting
implications for the development of new biomaterials, and further
work is planned.
The examiner is reminded that “[t]he consistent criterion for determination
of obviousness is whether the prior art would have suggested to one of ordinary
skill in the art that this process should be carried out and would have a
reasonable likelihood of success, viewed in the light of the prior art.” In re Dow
Chemical Co. 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988). In our
opinion, this section of Bird does not provide a person of ordinary skill in the art
with a reasonable expectation of success. Instead, Bird merely suggests a
direction for further research. This however, is not the standard of obviousness
under 35 U.S.C. § 103. See In re O’Farrell, 853 F.2d 894, 904, 7 USPQ2d 1673,
1681 (Fed. Cir. 1988).
Instead, a “prima facie case of obviousness is established when the
teachings from the prior art itself would appear to have suggested the claimed
subject matter to a person of ordinary skill in the art.” In re Bell, 991 F.2d 781,
782, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d
1048, 1051, 189 USPQ 143, 147 (CCPA 1976)). On this record, as appellant
points out, the prior art does not suggest the claimed subject matter.
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