Appeal No. 2003-0941
Application No. 09/797,296
III. Our Analysis
The critical issue before us is whether it would have been
obvious to have substituted the separation technique of Traver
(or of Traver in view of Hatch), with the pervaporation
technique of McGlothin.
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). See also Amgen, Inc. v. Chugai
Pharm. Co., 927 F.2d 1200, 1209, 18 USPQ2d 1016, 1023 (Fed. Cir.
1991).
In the instant case, The examiner also states that
McGlothlin teaches a variety of polymerized emulsions, including
silicones, from which the solvents can be removed by
pervaporation membrane (col. 8, lines 35-68). The examiner also
carefully explains that McGlothlin suggests removing a variety
of solvents such as aliphatic, saturated, unsaturated and
cyclic, including volatile hydrocarbons (col. 9, lines 1-10).
Answer, page 4.
In view of this similarity between the kinds of polymers
making up the emulsion of both McGlothlin and Traver, and
between the kinds of solvents removed, we believe that one of
ordinary skill in the art would have had a reasonable
expectation of success of using the pervaporation technique of
McGlothlin in the method of Traver.
On pages 5-6 of the Brief, appellants also argue that
modifying the teachings of Traver would be inconsistent with the
objectives and unexpected results of Traver. We find this
argument unpersuasive for the reasons provided by the examiner
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