Appeal No. 96-2884
Application No. 08/181,997
same in Example 13. Okamura further teaches the use of mixtures of carbonizing and
reducing agents with a reducing agent containing no carbon atom in the second step of the
process. (See column 1, lines 37-40 ). While Okamura does not have a working example
directed to the combination of carbon monoxide and/or carbon dioxide, hydrogen and
methane, we find Okamura’s teaching of using carbon monoxide and methane individually as
reducing and carbonizing agents along with his demonstration of using two reducing and
carbonizing agents together and his teaching to combine reducing and carbonizing agents or
mixtures thereof with a reducing agent sufficient to provide the suggestion and necessary
motivation to combine carbon monoxide and methane with or without hydrogen to convert a
reduced iron product to iron carbide in the Okamura process. In re Pinten, 459 F.2d 1053,
1055, 173 USPQ 801, 803 (CCPA 1972). Stephens demonstrates the use of a fluidized bed
in the conversion of iron feed to iron carbide. Appellant does not controvert this teaching or
the suggestion of using such bed in the Okamura process. Hence, the use of a fluidized bed
in Okamura would have been prima facie obvious. Thus, the prior art provides the
suggestion to make the claimed invention and the reasonable expectation of success. In re
Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1990).
Appellant urges that Okamura fails to teach the formation of a product in the
first step containing specified amounts of metallic iron (claims 11-13 and 26). Since, both
appellant and Okamura treat the same iron feed material with hydrogen gas, one of ordinary
skill in the art would expect production of the same product in the same or similar amounts.
13
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