Appeal No. 96-0216
Application 07/842,915
for the advantages of energy conservation and expedient
dissolution [Answer, p. 5, second complete para.].
It is well established that the PTO bears the initial burden
under 35 U.S.C. § 103 of presenting a prima facie case of
obviousness. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988); In re Piasecki, 745 F.2d 1468, 1472, 223
USPQ 785, 788 (Fed. Cir. 1984). The examiner must establish that
the teachings of the applied prior art would have suggested the
present method to a person having ordinary skill in the art, and
that such persons would have had a reasonable expectation of
success of preparing the claimed compositions. In re O’Farrell,
853 F.2d 894, 903-904, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988).
This suggestion must be in the prior art, and not in the
applicant’s disclosure. In re Dow Chemical Co., 837 F.2d 469,
473, 5 USPQ2d 1529, 1532 (Fed. Cir. 1988).
In the case before us, we are unable to discern how the
examiner has reached his conclusion of obviousness. As developed
in the Brief, the teachings of Nakagawa and Blardone collectively
differ in the silica starting material, processing temperatures,
and/or procedures (a closed pressurized system versus the open
hearth method). None of the references teaches or suggests the
combination of process steps which involve (i) heating biogenetic
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