Appeal No. 1996-0898
Application 08/083,838
U.S.C. § 103 as being unpatentable over Marwick in view of Saito et al.2 advanced by the examiner on
appeal.3 It is well settled that in order to establish a prima facie case of obviousness, “[b]oth the
suggestion and the expectation of success must be founded in the prior art, not in the applicant’s
disclosure.” In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531(Fed. Cir. 1988).
Thus, a prima facie case of obviousness can be established by showing that some objective teaching or
suggestion in the applied prior art taken as a whole and/or knowledge generally available to one of
ordinary skill in the art would have led that person to 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 Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir.
1988); Dow Chemical, supra. We reverse the ground of rejection because the prior art as applied by
the examiner does not address the limitations of claim 8 and thus does not establish a prima facie case
of obviousness.
In order to consider the issues in this appeal involved with the application of the prior art to the
claimed invention encompassed by appealed claim 8 in the ground of rejection advanced by the
examiner on appeal, we first must determine the invention encompassed by this claim as it stands before
us, mindful that we must give the broadest reasonable interpretation to the terms thereof consistent with
appellants’ specification as it would be interpreted by one of ordinary skill in this art. In re Morris, 127
F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22,
13 USPQ2d 1320, 1322 (Fed. Cir. 1989). In considering the plain language of claim 8 and the
interpretation of the terms thereof in light of appellants’ specification as it would be interpreted by one of
2 The references are listed in the examiner’s answer of July 3, 1995 (Paper No. 14, page 3).
3 In response to our remand of August 31, 1999 (Paper No. 21), in which we required “a complete
statement of the ground of rejection under § 103” (page 2), the examiner supplied a second
supplemental examiner’s answer on October 20, 1999 (Paper No. 22). Thus, we have considered this
document to constitute the complete statement of the ground of rejection. In the absence of a response
to the examiner’s second supplemental answer, we find that appellants have elected to stand on the
record. In view of the examiner’s statements on page 5 of the second supplemental answer, we state
again here as we did in our remand (pages 1-2), that the objection to the disclosure set forth in the
examiner’s answer is not before us.
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