Appeal No. 2003-0736 Page 5
Application No. 09/720,007
references would have suggested to one of ordinary skill in the art.” In re Young,
927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991).
“Obviousness does not require absolute predictability of success.” In re
O’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988). However,
the prior art must provide a basis for a reasonable expectation of success. See,
e.g., In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed.
Cir. 1988) (“[T]he expectation of success must be founded in the prior art, not in
the applicant’s disclosure.”).
In this case, we agree with Appellant that the examiner’s references do
not support a prima facie case of obviousness. First, as noted by Appellant,
none of the examiner’s references even mentions renal colic, and therefore the
references would not have suggested the specific, claimed method. See In re
Ochiai, 71 F.3d 1565, 1569, 37 USPQ2d 1127, 1131 (Fed. Cir. 1995) (“The test
of obviousness vel non is statutory. It requires that one compare the claim’s
‘subject matter as a whole’ with the prior art ‘to which said subject matter
pertains.’”); In re Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548 (CCPA 1970)
(“[E]very limitation positively recited in a claim must be given effect in order to
determine what subject matter that claim defines.”). Since the cited references
do not even mention renal colic, we cannot agree with the examiner that the
references would have suggested a method of treating renal colic.
The examiner asserted that “[i]t is general knowledge that typical
treatment of renal colic consists of the administration of morphine as a pain
killer,” Examiner’s Answer, page 3, although he did not cite any evidence in the
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