Appeal No. 1996-2215
Application No. 08/101,093
dioxide in the exhaust gas is the same.” Answer, page 4,
lines 5-12. The examiner concludes that “the claimed
invention would have been prima facie obvious to one of
ordinary skill in the art at the time the invention was made
especially in the absence of clear, convincing evidence to the
contrary.” Answer, page 4, lines 15-18.
6. To establish a prima facie case of obviousness, all
claim limitations must be taught or suggested by the prior
art. See In re Royka, 490 F.2d 981, 984, 180 USPQ 580, 583
(CCPA 1974). That is not the case here. As can be seen from
a review of sections IV-D2 and IV-D4 above, the examiner has
not established that the combined disclosures of Mori and
Shimizu would have led a person having ordinary skill in the
art to the instantly claimed process.
A rejection of claimed subject matter under 35 U.S.C. §
103 in view of the combined disclosures of prior art
references requires consideration of (1) whether the prior art
would have suggested carrying out the claimed process to a
person having ordinary skill in the art, and (2) whether the
prior art would have revealed that, in so carrying out, a
person having ordinary skill would have had a reasonable
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