Appeal No. 2005-1668
Application 09/920,891
absence of such evidence, it is apparent that the examiner’s position is one of speculation, which,
of course, is not the standard for the application of prior art to a claimed invention under
§ 103(a). See generally, In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458 (Fed. Cir.
1998) (“hindsight” is inferred when the specific understanding or principal within the knowledge
of one of ordinary skill in the art leading to the modification of the prior art in order to arrive at
appellant’s claimed invention has not been explained.); 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.”).
Accordingly, in the absence of a prima facie case of obviousness within the meaning of
35 U.S.C. § 103(a), we reverse the ground of rejection.
The examiner’s decision is reversed.
Reversed
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