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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