Appeal 2007-2121
Application 10/705,083
see also In re O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673, 1680-81
(Fed. Cir. 1988) (“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 Smith, Selby, Clarke, Gipp, and Roger, and further
with Anglea, with Appellant’s countervailing evidence of and argument for
nonobviousness and conclude that the claimed invention encompassed by
appealed claims 1, 3 through 6, 9, and 14 through 17 would have been
obvious as a matter of law under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is affirmed.
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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