Appeal No. 2004-1939
Application 10/120,497
conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.”).
Accordingly, we determine that, prima facie, one of ordinary skill in this art one of
ordinary skill in the art routinely following the combined teachings of Jessup, Kaneko and the
Phase 3 reformulated gasoline standards would have arrived at the claimed gasoline composites
encompassed by appealed claim 44, including each and every limitation thereof, without
recourse to appellants’ disclosure. See, e.g., Pro-Mold & Tool Co. v. Great lakes Plastics Inc.,
75 F.3d 1568, 1573, 37 USPQ 1626, 1629-30 (Fed. Cir. 1996) (“In this case, the reason to
combine [the references] arose from the very nature of the subject matter involved, the size of
the card intended to be enclosed.”); In re Gorman, 933 F.2d 982, 986-87, 18 USPQ2d 1885,
1888-89 (Fed. Cir. 1991) (“The extent to which such suggestion [to select elements of various
teachings in order to form the claimed invention] must be explicit in, or may be fairly inferred
from, the references, is decided on the facts of each case, in light of the prior art and its
relationship to the applicant’s invention.”); In re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d
1529, 1531 (Fed. Cir. 1988) (“The consistent criterion for determination of obviousness is
whether the prior art would have suggested to one of ordinary skill in the art that [the claimed]
process should be carried out and would have a reasonable likelihood of success, viewed in light
of the prior art. [Citations omitted] Both the suggestion and the expectation of success must be
founded in the prior art, not in the applicant’s disclosure.”); In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981)(“The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the primary reference; nor
is it that the claimed invention must be expressly suggested in any one or all of the references.
Rather, the test is what the combined teachings of the references would have suggested to those
of ordinary skill in the art.”); see also In re O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673,
1680-81 (Fed. Cir. 1988) (“Obviousness does not require absolute predictability of success. . . .
There is always at least a possibility of unexpected results, that would then provide an objective
basis for showing the invention, although apparently obvious, was in law nonobvious. [Citations
omitted.] For obviousness under § 103, all that is required is a reasonable expectation of success.
[Citations omitted.]”).
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