Appeal No. 2004-0117
Application 09/779,312
periphery far enough from the frame inner side to prevent
potentially injurious contact of a person’s hand with the open
edge of the container (col. 2, lines 35-38; figure 1).
The examiner argues that “[i]t would have been obvious to
one of ordinary skill in the art at the time the invention was
made to provide the lid [of] King with a hinged portion over an
apertured base portion as taught by Bowen. Doing so allows for
dispensing of the container contents without complete removal of
the closure from the container and resealing of the same”
(answer, page 3).
For a prima facie case of obviousness of the appellants’
claimed invention to be established, the prior art must be such
that it would have provided one of ordinary skill in the art with
both a suggestion to carry out the appellants’ claimed invention
and a reasonable expectation of success in doing so. See In re
Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed.
Cir. 1988). “Both the suggestion and the expectation of success
must be founded in the prior art, not in the applicant’s
disclosure.” Id. The mere possibility that the prior art could
be modified such that the appellants’ invention is carried out is
not a sufficient basis for a prima facie case of obviousness.
See In re Brouwer, 77 F.3d 422, 425, 37 USPQ2d 1663, 1666 (Fed.
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