Appeal No. 96-2884
Application No. 08/181,997
IV. Claims 1, 3, 5, 6, 8-21, 24, 26-32 and 34-40 stand rejected under 35 U.S.C. § 103 over
Okamura and claims 1, 2, 4-7, 9, 13-25, 33-41 stand rejected under 35 U.S.C. § 103 over
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Okamura taken with Stephens. We affirm these rejections as to claims 1, 3-26, 28-40 and
reverse these rejections as to claims 2, 27 and 41.
It is well settled that the Patent and Trademark Office (PTO) has the burden
under 35 U.S.C. § 103 of establishing a prima facie case of obviousness. In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). This burden can be satisfied when
the PTO, through the examiner, presents evidence by means of some teaching, suggestion,
or inference either in the applied prior art or in generally available knowledge, that would
have suggested the claimed subject matter to a person of ordinary skill in the art or would
have motivated a person of ordinary skill in the art to modify the applied reference(s) in the
proposed manner to arrive at the claimed invention. See In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598-99 (Fed. Cir. 1988), Carella v. Starlight Archery, 804 F.2d 135, 139,
231 USPQ 644, 647 (Fed. Cir. 1986); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 304, 227 USPQ 657, 673 (Fed. Cir. 1985); In re Rinehart, 531 F.2d 1048,
1051, 189 USPQ 143, 147 (CCPA 1976).
As to claims 2, 27 and 41 which require the addition of a gas containing
carbon to the first step of the claimed process, the examiner has failed to point out where
We include claim 18 within the affirmance since, as drafted, it embraces both4
concepts of not adding a gas and adding some gas to the first step.
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