Appeal No. 95-3422
Application 07/891,132
establishing a prima facie case of unpatentability under 35
U.S.C. § 103. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988):
The PTO has the burden under section 103 to establish a
prima facie case of obviousness. See In re Piasecki,
745 F.2d 1468, 1471-72, 223 USPQ 785, 787-87 [sic, 88]
(Fed. Cir. 1984). It can satisfy this burden only by
showing some objective teaching in the prior art or that
knowledge generally available to one of ordinary skill
in the art would lead that individual to combine the
relevant teachings of the references.
The statements made in Fine at 1075, 5 USPQ2d at 1599, equally
apply to the rejections of the subject matter claimed in this
case under section 103:
Obviousness is tested by “what the combined
teachings of the references would have suggested to
those of ordinary skill in the art.” In re Keller,
642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
But it “cannot be established by combining the
teachings of the prior art to produce the claimed
invention, absent some teaching or suggestion supporting
the combination. . . . And “teachings of references can
be combined only if there is some suggestion or incentive
to do so.” . . . Here, the prior art contains none.
The examiner has rejected Claims 1-9 and 12-21 based on a
finding that appellants’ acknowledgment of the prior existence
of a commercially available material comprising a silicon
carbide coated carbon fiber composite prima facie would have
led persons having ordinary skill in the art to form both a
“reaction vessel defining a chamber for contacting
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