Appeal No. 2001-1499 Page 9
Application No. 08/957,654
forth in In re O’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1681 (Fed. Cir.
1988):
The admonition that “obvious to try” is not the standard
under § 103 has been directed mainly at two kinds of error. In
some cases, what would have been “obvious to try” would have
been to vary all parameters or try each of numerous possible
choices until one possibly arrived at a successful result, where the
prior art gave either no indication of which parameters were critical
or no direction as to which of many possible choices is likely to be
successful. … In others, what was “obvious to try” was to explore a
new technology or general approach that seemed to be a
promising field of experimentation, where the prior art gave only
general guidance as to the particular form of the claimed invention
or how to achieve it.
In our opinion, both the examiner’s and the dissent’s position fits the second kind
of error set forth by O’Farrell, wherein the secondary references relied upon by
the examiner suggest, at best, the exploration of a promising field of
experimentation.
To establish a prima facie case of obviousness, there must be both some
suggestion or motivation to modify the references or combine reference
teachings and a reasonable expectation of success. In re Vaeck, 947 F.2d 488,
493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991). In the absence of a reasonable
expectation of success one is left with only an “obvious to try” situation which is
not the standard of obviousness under 35 U.S.C. § 103. See O’Farrell, supra.
In our opinion, the evidence relied upon on this record does not provide a
person of ordinary skill in the art with a reasonable expectation of success in
obtaining the claimed invention. Accordingly, we reverse the rejection of claims
1-3, 7 and 8 under 35 U.S.C. § 103 as being unpatentable over Gillis in view of
Rao.
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007