Appeal No. 1996-3974
Serial No. 08/198,808
Page 4
implemented process, which implement the “nodal model” on either an analog or digital
computer. We find the examiner’s total disregard for these claim provisions to be unreasonable.
In order to properly evaluate this claim, all of the method steps must be considered.
So far as the second step of the anticipation analysis is concerned, the examiner has
provided Hobbs merely to show that a composite incorporating a fiber, a matrix and an
interphase can indeed be formed. [See Examiner’s Answer, pages 3-4.] Hobbs fails to
disclose the detailed computer-implemented process steps (a) through (e). Thus, we reverse
the rejection of claim 19 under 35 U.S.C. § 102 (b).
Independent claim 19 is also rejected under 35 U.S.C. § 103 as being unpatentable
over Hobbs. In making a rejection under 35 U.S.C. § 103, the burden is on the examiner to
establish a prima facie case of obviousness. In order to carry this burden, the examiner must
establish why one having ordinary skill in the art would have been led to the claimed invention
by the reasonable teachings or suggestions found in the prior art, or by a reasonable inference to
the artisan contained in such teachings or suggestions. See In re Sernaker, 702 F.2d 989, 217
USPQ 1 (Fed. Cir. 1983).
The examiner’s only support for this rejection is stated as “it is the position of the
examiner that it would have been well within the scope to the ordinary skill in the art to consider
any of the parameters claimed by applicant and make a determination of suitable values for such
parameters consistent with the intended end use.” [See Examiner’s Answer, page 4.] The
above statement of the examiner’s position fails to demonstrate how or why the claim limitations
would have been obvious to one of ordinary skill in the art at the time of the invention. As a
result, the examiner has failed to make a prima facie case of obviousness. Thus, we reverse the
rejection of claim 19 under 35 U.S.C. § 103.
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