Appeal No. 2001-2157 Page 9
Application No. 08/918,741
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 . . . Both the suggestion and expectation of success must be founded in the
prior art, not in the applicant's disclosure"). Applicants argue that when all of the prior
art is considered together, persons having ordinary skill would not have a sufficient
basis for the necessary predictability of success to sustain a rejection under 35 U.S.C.
§ 103(a). We agree.
Simply stated, the examiner has not adequately addressed applicants' argument
based on the lack of a reasonable expectation of success founded in the prior art. The
examiner argues that (1) the process (spray-drying) and its outcome (preparation of
amorphous product) is a matter of "common sense" for a person having ordinary skill;
and (2) the examiner should not be obliged to provide documentary proof that persons
having ordinary skill would have arrived at the claimed subject matter with a reasonable
expectation of success (Paper No. 13, page 5, second full paragraph). That argument,
however, is contrary to prevailing case law. Again, "both the suggestion and the
reasonable expectation of success must be founded in the prior art, not in the
applicant's disclosure." In re Dow Chemical Co., 837 F.2d at 473, 5 USPQ2d at 1531.
Nor may the examiner properly take official notice of facts to fill the particular gap in the
record here challenged by applicants. To the extent the examiner would argue that
those facts are capable of instant and unquestionable demonstration as being "well-
known" in the art, without the citation of a reference, we disagree. See MPEP
§ 2144.03. To the extent that the examiner would rely on Eagleson's Concise
Encyclopedia Chemistry, published by Walter de Gruyter, New York, page 67 (1994),
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