Appeal No. 95-2080
Application 08/053,965
consideration by the examiner pursuant to 37 CFR § 1.142(b).
We have carefully considered the record before us, and based thereon, find that we cannot
sustain the ground of rejection of claims 1 through 13 under 35 U.S.C. § 103 over Mizogami in view of
Ausimont, Kashiwa and Kurz. It is well settled that the examiner may satisfy his burden of establishing3
a prima facie case of obviousness under § 103 by showing some objective teachings or suggestions in
the prior art taken as a whole or that knowledge generally available to one of ordinary skill in the art
would have led that person to arrive at the claimed invention as a whole, including each and every
limitation of the claims, without recourse to the teachings in appellant’s disclosure. See generally In re
Oetiker, 977 F.2d 1443, 1447-48, 24 USPQ2d 1443, 1446-47 (Fed. Cir. 1992) (Nies, J.,
concurring); In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991); In re Fine,
837 F.2d 1071, 1074-1076, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chemical
Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988); In re Warner, 379 F.2d 1011,
1014-17, 154 USPQ 173, 176-78 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968). However,
the examiner has failed to make out a prima facie case of obviousness as to the claimed invention as
whole encompassed by claims 1 through 13 since he has not provided evidence and/or scientific
reasoning in the record why one of ordinary skill in this art would have modified Mizogami with the
teachings of Ausimont and Kurz (answer, pages 2-3 and 4-5) or, in an embedded combination of
references, would have modified Ausimont with the teachings of Kashiwa and also of Mizogami
(answer, pages 3-4) in order to arrive at the solid catalyst components, the methods of making solid
was entered upon the filling of an appeal by the examiner in his advisory action of December 8, 1993
(Paper No. 27). The examiner did not appropriately mark either of the amendments with respect to
whether the same should be entered. Both amendments were clerical entered wherein the claim 1 as
presented in the amendment of December 1, 1993, was canceled in favor of claim 1 as presented in
the amendment of November 12, 1993, and the amendment of November 12, 1993 was entered with
respect to both claims 1 and 5. Based on the decisions of the examiner with respect to the entry of
these amendments as set forth in his advisory actions, the claims properly before us in this appeal are
claim 1 as presented in the amendment of December 1, 1993, and claim 5 as presented in the
amendment of November 6, 1992 (Paper No. 15 of application ‘293).
3The references relied on by the examiner are listed at page 2 of the answer. We refer to these
references in our opinion by the name associated therewith by the examiner.
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