Appeal No. 95-1971
Application No. 08/126,130
fails to establish a prima facie case, the rejection is
improper and will be overturned. In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
As the examiner recognizes there is no disclosure in
Jukes of a bismuth alloy. While the examiner makes much of
the fact that Jukes states that the fishing weight may be "any
other" non-lead based material, we point out that it is well
settled that in order to establish a prima facie case of
obviousness the prior art teachings must be sufficient to
suggest to one of ordinary skill in the art to make the
modification needed to arrive at the claimed invention. See,
e.g., In re Lalu, 747 F.2d 703, 705, 223 USPQ 1257, 1258 (Fed.
Cir. 1984). It is of course true that Jukes states on page 1
that "any other" non-lead based material may be used; however,
there is no teaching or suggestion in the prior art adduced by
the examiner which would have lead one of ordinary skill in
this art to single out and select a bismuth alloy from the
myriads of possibilities encompassed by this broad disclosure.
As to the examiner's contention that it is "well recognized"
that bismuth alloys have a high specific gravity and a low
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