Appeal No. 2005-2753
Application No. 09/730,238
With regard to a reasonable expectation of success, it is agreed, as stated in Vaeck
and MPEP § 2143, that this may be a relevant factor in determining whether a prima facie
case of obviousness has been established in some circumstances. Such a test is appropriate
in chemical cases where results are often unpredictable. However, in mechanical and/or
electrical cases, there is seldom any uncertainty as to the outcome of combining references.
Thus, in the instant case, we found, for example, that the USB hub must be powered
from some source and that the skilled artisan would have been led to simply connect the
already existing power supply 112, in Herwig, to the USB hub 114 as an alternative to the
internal power source suggested by Flannery, in view of the teachings from the references
that a power source may be in the USB cable, internal to the USB hub, or within the same
housing as the USB hub. There is no doubt that connecting the power supply to the USB hub
will work and, therefore, there is simply no question about “reasonable expectation of
success.”
Hence, appellant’s argument anent “reasonable expectation of success” is not
persuasive. It may be but one factor, and clearly not the only and deciding factor, as to
whether certain claimed subject matter is obvious, within the meaning of 35 U.S.C. § 103.
We have set forth in our opinion reasoning as to why the applied references would have
suggested the instant claimed subject matter and appellant has failed to indicate, in the
request for rehearing, any perceived error in our analysis or any reasons why there is no
reasonable expectation of success.
C.
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