Ex parte GLADFELTER et al. - Page 2


               Appeal No. 1997-0043                                                                                             
               Application 08/071,596                                                                                           

                      We have carefully considered the record before us, and based thereon, find that we cannot                 
               sustain the grounds of rejection of claims 1 through 14 and 23 through 25 under 35 U.S.C.  102 or, in           
               the alternative, under 35 U.S.C.  103 over Joshi et al., and of claims 15 through 22 under 35 U.S.C.           
               103 over Joshi et al. in view of Ogar et al., KAO Corp. or Henkel.2                                              
                      It is well settled that in order to establish a prima facie case of anticipation, each and every          
               element of the claimed invention, arranged as required by the claims, must be found in a single prior art        
               reference, either expressly or under the principles of inherency.  See generally In re King, 801 F.2d            
               1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986); Lindemann Maschinenfabrik v. American                            
               Hoist and Derrick, 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).  It is also 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 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 is 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 appellants’ 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                       
               Warner, 379 F.2d 1011, 1014-17, 154 USPQ 173, 176-78 (CCPA 1967).                                                
                      We agree with appellants that the examiner has failed to carry his burden of establishing a prima         
               facie case of anticipation and of obviousness with respect to the claimed invention.  We have                    
               interpreted appealed claim 1 in light of appellants’ specification as it would be interpreted by one of          
               ordinary skill in this art.  See In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed.                
               Cir. 1997).  We find that claim 1 specifies a solid system comprising “at least one substantially                
               continuous surface for contact by an aqueous spray” formed by “a first shape comprising an inwardly              
               curved bar . . . having an inner opening spanning between said bar top surface and said bottom surface”          
               and “a second shape comprising an insert . . . [that] is                                                         

                                                                                                                                
               2  The references relied on by the examiner are listed at page 3 of the answer.                                  

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