Appeal 2007-0072
Application 09/945,861
78 USPQ2d 1329, 1334-37 (Fed. Cir. 2006); In re Dow Chem. Co., 837 F.2d
469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988);3 In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981);4 see also In re O’Farrell, 853
F.2d 894, 903-04, 7 USPQ2d 1673, 1680-81 (Fed. Cir. 1988) (“Obviousness
does not require absolute predictability of success. . . . For obviousness
under § 103, all that is required is a reasonable expectation of success.”
(citations omitted).
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Sugimura and Brookhart with Appellants’
countervailing evidence of and argument for nonobviousness and conclude
that the claimed invention encompassed by appealed claims 42 through 49
would have been obvious as a matter of law under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is affirmed.
3 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.
Dow Chem., 837 F.2d at 473, 5 USPQ2d at 1531.
4 The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
Keller, 642 F.2d at 425, 208 USPQ at 881.
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