Appeal No. 2003-1018
Application No. 09/093,771
1442 (Fed. Cir. 1991). Both the suggestion and the reasonable expectation of success
must be found in the prior art, not in appellants' disclosure. In re Dow Chem. Co.,
837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988). [Emphasis added.]
Without a clearer indication from the examiner of where the prior art provides
motivation for substituting the salts of the substrate solution of Yoshimura for the
aggregating agents of Chayen, it would appear that the examiner has relied on
appellant's disclosure for such motivation to combine the cited references.
We also acknowledge that appellants additionally argue that Chayen fails to
mention whether a water filtrate is left behind after removal of the lipid-protein complex.
Thus, appellants argue that Chayen “cannot suggest isolating proteins native to the raw
vegetable material from the water filtrate when Chayen fails to even mention that
proteins are present in the water filtrate.” Brief, page 4. However, we are not
persuaded by this argument, as it pertains to claim limitations present in claim 21 and
does not address the invention of claim 1.
We have carefully studied the arguments and evidence of record. On balance,
we believe that the totality of the evidence presented by the examiner and appellants
weighs in favor of finding the claimed invention non-obvious in view of the cited
references. We find the examiner has not established on the record before us that the
cited references both suggest the claimed subject matter and reveal a reasonable
expectation of success to one reasonably skilled in the art. The rejection of the claims
for obviousness of the claimed invention is reversed.
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