Appeal No. 2002-0502
Application 08/853,425
operations (answer, page 5).4 Improved integrity, the examiner
argues, would prevent bunching up, which Heiman indicates is
undesirable (answer, pages 3 and 5).5
In order for a prima facie case of obviousness of the
appellant’s claimed invention to be established, the prior art
must be such that it would have provided one of ordinary skill in
the art with both a suggestion to carry out the appellant’s
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 success must be founded in the prior art, not in
the applicant’s disclosure.” Id. The mere possibility that the
prior art could be modified such that the appellant’s process is
carried out is not a sufficient basis for a prima facie case of
obviousness. See In re Brouwer, 77 F.3d 422, 425, 37 USPQ2d
1663, 1666 (Fed. Cir. 1996); In re Ochiai, 71 F.3d 1565, 1570,
37 USPQ2d 1127, 1131 (Fed. Cir. 1995).
4 We have renumbered the pages of the examiner’s answer
consecutively.
5 Heiman prevents bunching up by use of a stiffener sheet
(col. 19, lines 1-20 and 40-48).
5
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