Appeal No. 2003-0604
Application No. 09/307,544
OPINION
The common issue among all of the 35 U.S.C. § 103
rejections is whether the examiner has provided a proper factual
foundation supporting her conclusion that one of ordinary skill
in the art would have expected that the addition of inert solids
(for example, sand), before activation with water, rather than
after activation with water, would provide no substantial
difference in results. (Answer, page 14.)
We note that the prior art can be modified or combined to
reject claims as prima facie obvious as long as one of ordinary
skill in the art would have had a reasonable expectation of
success. In re Merck & Co., Inc., 800 F.2d 1091, 1097, 231 USPQ
375, 379 (Fed. Cir. 1986). Here, the examiner’s rejection
lacks an explanation of how one of ordinary skill in the art
would have had a reasonable expectation of success that no
substantial difference in effect would occur if one of ordinary
skill in the art would have added the sand in Sydansk prior to
formation of the gel (i.e., prior to activation with an aqueous
solvent) versus after formation of the gel. On page 14 of the
Answer, the examiner states “the addition of inert solids, i.e.
sand, would have no effect on the cross linking composition and
gelling agent.” Yet, the examiner does not provide facts on the
record to support this as knowledge possessed at the time of
invention by one of ordinary skill in the art. Due to this lack
of factual foundation, we reverse each of the 35 U.S.C. § 103
rejections.
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