Appeal No. 95-4253
Application 07/890,394
applied 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 the claimed invention, including each and every limitation of the
claims, without recourse to the teachings in appellants' 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)(“Both the suggestion and the
reasonable expectation of success must be found in the prior art, not in applicant’s disclosure. [Citation
omitted.]”); In re Warner, 379 F.2d 1011, 1014-17, 154 USPQ 173, 176-78 (CCPA 1967), cert.
denied, 389 U.S. 1057 (1968). We must conclude that the examiner has failed to make out a prima
facie case of obviousness with respect to the appealed claims as a whole since he has not provided
evidence and/or scientific reasons in the record why one of ordinary skill in this art would have
considered the “thread” of the claims to be the “tow” of the applied references and why one of ordinary
skill in this art would have modified this “tow” as the examiner suggests in order to arrive at the filter
elements defined by the terms of the appealed claims. Thus, it is manifest that the only direction to
appellants’ claimed invention as a whole on the record before us is supplied by appellants’ own
specification.
The examiner’s decision is reversed.
Reversed
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
PAUL LIEBERMAN )
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