Appeal No. 1996-2077
Application 08/271,922
To compensate for the latter deficiency, the examiner turns to Cornelison, which
discloses a catalytic converter for diesel engines which traps particulates in exhaust gas.
Cornelison, col. 1, lines 11-15. The examiner relies on the disclosure of Cornelison of a
catalytic converter comprising at least one strip of metal which “defines a tortuous flow path
for exhaust gas from the engine.” Id., col. 2, lines 19-20. As his initial premise, the
examiner states that
It would have been obvious to one having ordinary skill in the art to provide a
specific structure for the catalytic support in the modified apparatus of Carr
et al[.] as taught by Cornelison et al[.] to provide a tortuous flow path for the
exhaust gas for increasing contacting surface area of the gas with the
catalyst thereof, thereby providing a more efficient and complete catalytic
reaction between ozone-containing gas and the catalyst material thereof [
Answer, p. 5].
It is this initial premise, on which all of the examiner’s conclusions of obviousness
are based, which we find to be fatally defective.
It is well established that the examiner has the initial burden under § 103 to
establish a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471-72, 223
USPQ 785, 787-88 (Fed. Cir. 1984). To that end, the examiner must show that some
objective teaching or suggestion in the applied prior art, or knowledge generally available
in the art would have led one of ordinary skill in the art to combine the references to arrive
at the claimed invention. Pro-Mold & Tool Co. v. Great Lakes
Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996). Here,
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