Appeal No. 1996-0647
Application No. 07/871,401
specifically to prevent TCDF and TCDD formation
(Kringstad)(Answer, paragraph bridging pages 3-4).
Appellant argues that this rejection combines Granum,
which is directed to bleaching sulphite pulps, with references
to "Technical News" and Kringstad which are directed to
bleaching sulphate (kraft) pulps (Brief, page 6).
On the record before us, we agree with appellant that the
combination of a reference to bleaching of sulphite pulp with
references to sulphate pulp bleaching in the manner proposed
by the examiner is improper. As stated by our reviewing Court
in In re Jones, 958 F.2d 347, 351, 21 USPQ2d 1941, 1943-44
(Fed. Cir. 1992):
Before the PTO may combine the disclosures of two or
more prior art references in order to establish
prima facie obviousness, there must be some suggestion
for doing so, found either in the references
themselves or in the knowledge generally available
to one of ordinary skill in the art. [Citation
omitted].
The examiner admits that Granum does “discuss the
properties of sulphite pulps” but states that Granum, on the
last page of the article, discusses the differences in
mutagenicity when bleaching sulphite versus sulphate pulps.
The examiner submits that “[i]t appears the EXPERIMENTAL (page
6
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