Appeal No. 2005-0585
Application No. 09/821,478
teach the claimed invention, we note that “the consistent
criterion for determination of obviousness is whether the prior
art would have suggested to one of ordinary skill in the art
that this process should be carried out and would have a
reasonable likelihood of success, viewed in the light of the
prior art.” In re Dow Chemical Co., 837 F.2d 469, 5 USPQ2d
1529, 1531 (Fed. Cir. 1988) (citing Burlington Industries v.
Quigg, 822 F.2d 1581, 583, 3 USPQ2d 1436, 1438 (Fed. Cir.
1987); In re Hedges, 783 F.2d 1038, 1041, 228 USPQ 685, 687
(Fed. Cir. 1987)); Orthopedic Equipment Co. v. United States,
702 F.2d 1005, 1013, 217 USPQ 193, 200 Fed. Cir. 1983); In re
Rinehart, 531 F.2d 1048, 1053-54, 189 USPQ 143, 148 (CCPA
1976). It is thus the position of the court that, where
claimed subject matter has been rejected as obvious in view of
a combination of prior art references, a proper analysis under
§ 103 requires, inter alia, consideration of two factors: (1)
whether the prior art would have suggested to those of ordinary
skill in the art that they should make the claimed composition
or device, or carry out the claimed process; and (2) whether
the prior art would also have revealed that in so making or
carrying out, those of ordinary skill would have a reasonable
expectation of success. Both the suggestion and the reasonable
expectation of success must be founded in the prior art, not in
the applicant’s disclosure. Dow Chem., supra.
In the instant case, the examiner has explained, in detail,
(1) how the applied art suggests carrying out appellant’s
claimed process, and (2) how the applied art reveals a
reasonable expectation of success in carrying out the claimed
process. We refer to the above-described examiner’s position in
this regard.
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