Appeal No. 1996-0796
Application No. 08/097,662
engine, is likewise useful for a closed bomb device.
In reaching this conclusion, we note that both the
ceramic and the silicone rubber are “functionally equivalent”
in that they are useful as liners and insulation. However,
that fact alone is not sufficient to establish a prima facie
case of obviousness. In re Edge, 359 F.2d 896, 899, 149 USPQ
556, 557 (CCPA 1966). The examiner must demonstrate that the
applied prior art references as a whole provide the requisite
suggestion
and reasonable expectation of success to employ a ceramic
liner in a closed bomb device. For the reasons indicated
supra, we conclude that the examiner simply has not carried
his burden in establishing a prima facie case of obviousness
regarding the claimed subject matter.2 Accordingly, we
2 Appellants ask us to consider a declaration which was not entered by
the examiner. We need not consider the declaration for two reasons. First,
since the examiner has not established a prima facie case, we need not
consider the sufficiency of the declaration relied upon by appellants.
Second, since the declaration is not part of the record, we cannot consider it
in determining the propriety of the examiner’s rejection. If the examiner
does not approve entry of the declaration proffered by appellants, their
remedy is via a petition to the Commissioner of the U.S. Patent and Trademark
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