Appeal No. 2003-0437
Application No. 09/523,801
OPINION
For the reasons emphasized below, we reverse the rejection.
As a preliminary matter, we note that the prior art can be
modified or combined to reject claims as prima facie obvious as
long as there is a reasonable expectation of success. In re
Merck & Co., Inc., 800 F.2d 1091, 1097, 231 USPQ 375, 379 (Fed.
Cir. 1986).
In the instant case, the examiner’s position is that it
would have been obvious to have modified Tomita by providing a
geometrical or regular pattern as illustrated by Fig. 2 of
Hotchkiss. (Answer, page 4). On page 5 of the answer, the
examiner states “therefore, it would have been obvious to one of
ordinary skill in the art at the time the invention was made to
have formed the Tomita nonwoven so that it had a geometrical
pattern.” On page 4 of the answer, the examiner states that in
Tomita, the pattern is a result of the surface configuration of
the second support roll and the examiner states that it could be
varied according to the pattern desired. However, the examiner’s
rejection did not provide an explanation of how the surface
configuration of the second support roll should be varied in such
a way that a reasonable expectation of success of achieving
appellants’ claimed nonwoven fabric could be accomplished
according to the process of Tomita. Hence, we determine that the
examiner has not set forth a prima facie case of obviousness.
Id.
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