Appeal No. 96-1142
Application 07/939,180
established, the teachings from the prior art itself must
appear to have suggested the claimed subject matter to one of
ordinary skill in the art. See In re Rinehart, 531 F.2d 1048,
1051, 189 USPQ 143, 147 (CCPA 1976). The mere fact that the
prior art could be modified as proposed by the examiner is not
sufficient to establish a prima facie case of obviousness.
See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783
(Fed. Cir. 1992).
The examiner argues, in reliance upon In re Larsen, 292
F.2d 531, 130 USPQ 209 (CCPA 1961), cert. denied, 370 U.S. 936
(1962), In re Albertson 332 F.2d 379, 141 USPQ 730 (CCPA
1964), and In re Durden, 763 F.2d 1406, 226 USPQ 359 (Fed.
Cir. 1985), that even if Chao’s composition differs from that
of appellants, the relevant issue is the process steps, not
the materials involved in the process (answer, pages 6-8).
The examiner’s argument is based on a per se rule that
use of a new starting material in a prior art process would
have been obvious to one of ordinary skill in the art. As
stated by the Federal Circuit in In re Ochiai, 71 F.3d 1565,
7
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