Appeal No. 2002-2152
Application No. 08/701,764
Kittrell et al. 5,290,275 Mar. 1, 1994
(Kittrell)
Tang et al. 5,729,583 Mar. 17, 1998
(Tang) (filed Sep. 29, 1995)
Claims 1 through 5, 10 through 16, 18 through 21, 38, 43,
and 64 through 66 on appeal stand rejected under 35 U.S.C. § 103
as unpatentable over Parker in combination with Forde and Tang.
(Examiner’s answer mailed Oct. 24, 2001, paper 28, page 4.) In
addition, claims 6, 7, 9, 17, 39 through 42, 44, 45, 62, and 63
on appeal stand rejected under 35 U.S.C. § 103 as unpatentable
over Parker in combination with Forde, Tang and Kittrell. (Id.
at pages 4-5.)
We reverse these rejections for essentially those reasons
set forth in the appeal brief filed Jul 2, 2001 (paper 27).
Rejection Based on Parker, Forde, and Tang
To properly reject claims under 35 U.S.C. § 103 as prima
facie obvious in view of a combination of prior art references,
an examiner must consider, inter alia, two factors: (1) whether
the prior art would have suggested to one of ordinary skill in
the art to make the claimed composition or carry out the claimed
process; and (2) whether the prior art would also have revealed
that, in so making or carrying out, the person of ordinary skill
would have had a reasonable expectation of success. In re
Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991)
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