Appeal No. 1998-2077
Application 08/553,324
inter alia, ZQPZ and ZQPZP, falling within the appealed claims, with the reasonable expectation of
reducing the kappa number of the pulp, thus increasing the brightness thereof. See In re Dow Chemical
Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531(Fed. Cir. 1988) (“The consistent criterion for
determination of obviousness is whether the prior art would have suggested to one of ordinary skill in the
art that this process should be carried out and would have reasonable likelihood of success, viewed in
the light of the prior art.”); In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981) (“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.”); In re Fortress, 639 F.2d 1009,
1017, 152 USPQ 13, 19 (CCPA 1966) (“Although we grant that there is no specific suggestion in either
reference to combine [one step] with the other step, we do not think it required in the circumstances of
this case where both steps are taught to be part of the standard fund of modifications in the art, and the
two steps do not coact in some mutually dependent way. The independence of the steps is evidenced,
too, by the fact that they may be performed in any sequence, and that change in the control parameters
of one does not appear to call for a critical change in any of those of the other – each is relatively
separate and independent.”).
I have carefully considered all of appellants’ arguments presented in their brief and reply brief,
and the evidence in the specification as relied on therein, in rebuttal to the prima facie case made out by
the examiner in again assessing the patentability of the claimed invention as a whole based on the record
as a whole, including all the evidence of obviousness and of nonobviousness. See generally, In re
Piasecki, 745 F.2d 1468, 1472-73, 223 USPQ 785, 788 (Fed. Cir. 1984).
With respect to the teachings of the references, appellants submit that “Lindberg does not teach
that ozone and a chelating agent work in the same manner,” alleging that the reference “teaches only that
the step (a) can be an ozone stage or a chelation stage,” at col. 2, lines 29-31, which are known to have
different functions, and that it is appellants who “have now found that the ozone stage can release new
metals from the pulp into solution” (reply brief, pages 3-4; see also brief, pages 11 and 14).
On this record, I find little merit in appellants’ position. It is well settled that a reference stands
for all of the specific teachings thereof as well as the inferences one of ordinary skill in this art would
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