Appeal 2006-2632
Application 09/881,807
to one of ordinary skill in the art that he 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, one of
ordinary skill would have a reasonable expectation of success.
In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991).
Both the suggestion and the reasonable expectation of success “must be
founded in the prior art, not in the applicant's disclosure.” Id. In this case,
the Examiner has explained why one of ordinary skill would have reasonable
expectation of success (factor (2)), but has failed to provide a detailed
analysis of the prior art and reasons why one of ordinary skill in the art
would have possessed the knowledge and motivation to make the
combination recited in the claims (factor (1)). When the Examiner does not
explain the motivation, suggestion or teaching that would have led the
skilled artisan to the claimed combination, there is an inference that the
Examiner relied on hindsight to conclude that the invention was obvious.
See In re Kahn, 441 F.3d 977, 986, 78 USPQ2d 1329, 1337 (Fed. Cir. 2006).
We are in agreement with Appellants that, in this case, a prima facie
showing of obviousness based on the applied prior art required, at a
minimum, some explanation as to why one of ordinary skill in the art would
have selected polyquaternium 37 from Cotteret’s extensive list of cationic
polymers. The Examiner has not directed us to any objective teaching in the
prior art or identified the information generally available to one of ordinary
skill in the art which would have led that individual to select polyquaternium
37, or any other cationic homopolyer having the claimed formula (I), for use
in Narasimhan’s composition. See In re Fine, 837 F.2d 1071, 1075, 5 USPQ
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