Appeal No. 2004-0971
Application No. 09/887,933
Furthermore, the examiner has not provided any factual
basis that one of ordinary skill in the art would have
reasonably expected a primary amide to possess the same
function/properties of a secondary amide in appellants’
claimed process. On the other hand, appellants discuss in
detail, on pages 3-4 of the Reply Brief, how “not all
amides are created equal”.
We note that the initial burden of presenting a prima
facie case of unpatentability on any ground rests with the
examiner. See In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). We also note that in
order for a prima facie case of obviousness of the claimed
invention to be established, the prior art as applied must
be such that it would have provided one of ordinary skill
in the art with both a suggestion to carry out appellants’
claimed invention and a reasonable expectation of success
in so doing. See In re Dow Chem. 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.
In the instant case, as pointed out by appellants on
pages 4-5 of the Reply Brief, the examiner has, at best,
offered an “obvious to try” standard, which is insufficient
to support a prima facie case. See, In re Geiger, 815 F.2d
686, 687, 2 USPQ2d 1276, 1278; cf. In re Wesslau, 353 F.2d
238, 241, 147 USPQ 391, 393 (CCPA 1965).
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