Appeal No. 2006-2407
Application No. 09/802,857
We also note briefly appellants’ remarks at page 11 of the principal brief on
appeal alleging the examiner has exercised an obvious-to-try rationale. The
arguments actually have not been developed, but merely asserted. We therefore do
not agree with appellants observation that the examiner has exercised a prohibited
obvious-to-try analysis in formulating the rejection of the claims on appeal. We
simply do not see that the evidence provided by the examiner and the rationale of
combinability is consistent with a prohibited obvious to try rationale. In re
O’Farrell, 853, F2.d 894, 903, 7 USPQ2d 1673, 1681 (1988) indicates that an
obvious to try rationale is permitted within 35 U.S.C. § 103 as long as the prior art
provides a reasonable expectation of success, while not providing only general
guidance or the varying of all parameters or trying each of a significant number of
possible choices until one arrived at the claimed invention. Obviousness does not
require absolute predictability of success.
In view of the foregoing, the decision of the examiner rejecting all claims on
appeal under 35 U.S.C. § 103 is affirmed.
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007