Appeal No. 1996-3214 Page 7
Application No. 08/195,897
of Mendicino so as to react with a haloplatinate material to
form a catalyst as claimed herein. The examiner's position
regarding the obviousness of adding an onium salt as an
"inhibiting functional compound" to the reaction mixture
(presumably of Mendicino) prior to platinum catalyst addition
to forestall composition decolorization (answer, page 4) is
manifestly untenable on this record.
It is well settled that the examiner has the initial
burden of establishing a prima facie case of obviousness. In
re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147
(CCPA 1976). This burden can be satisfied when the examiner
provides objective evidence that some teaching or suggestion in
the applied prior art, or knowledge generally available, would
have led one of ordinary skill in the art to combine the
teachings of the references and to produce the claimed subject
matter. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). The teaching or suggestion must be in the
prior art, and not in the applicants* disclosure. In re Dow
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