Appeal No. 2005-1186 Page 4
Application No. 09/746,872
the cited references suggest the desirability of modifying the
composition of Krzysik, to include components of Klofta and Beerse.
Appellants argue that the examiner does not explain why one of
ordinary skill in the art would pick and choose components from
Klofta to form a lotion for diapers. Secondly, appellants argue
that the examiner has failed to show a reasonable expectation of
success. We are not convinced by appellants’ arguments for the
following reasons.
Firstly, we refer to the examiner’s response in this regard,
made on pages 5-7 of the answer, and incorporate it as our own. We
add the following comments for emphasis.
We note that in order for a prima facie case of obviousness of
a 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 found in the prior art, not in the appellants’ disclosure.
Id. We also note that obviousness can be established by combining
or modifying the teachings of the prior art to produce the claimed
invention where there is some teaching, suggestion, or motivation
to do so found either in the reference or in the knowledge
generally available to one of ordinary skill in the art. In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
We again note that the prior art can be modified or combined to
reject claims as prima facie obvious as long as one of ordinary
skill in the art would have had a reasonable expectation of
success. In re Merck & Co., Inc., 800 F.2d 1091, 1097, 231 USPQ
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