Appeal No. 1997-0433
Application 08/230,582
(published Japanese Pat. Bulletin)
The examiner has rejected claims 1 and 4 through 7 under 35 U.S.C. § 103 as being
unpatentable over Jarvis in view of Suzuki (answer, pages 3-4) and claims 8 through 10 under 35
U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103 as obvious over Suzuki
(answer, pages 4-5).
We affirm the ground of rejection of claims 8 through 10 but reverse the ground of rejection of
claims 1 and 4 through 7. Accordingly, the decision of the examiner is affirmed-in-part.
Opinion
We have carefully considered the record before us,4 and based thereon, find that we cannot
sustain the rejection of the appealed claim 1 under § 103 advanced by the examiner on appeal. It is
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 the 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 can be 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 appellant’s disclosure. See generally In re Rouffet,
149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great
Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re
Oetiker, 977 F.2d 1443, 1447-48, 24 USPQ2d 1443, 1446-47 (Fed. Cir. 1992) (Nies, J.,
concurring); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988);
Dow Chemical, supra.
Appellant submits that, in the absence of his disclosure, one of ordinary skill in this art would not
have found in the combined teachings of Jarvis and Suzuki a suggestion of the claimed process
encompassed by claim 1 because in the process of Jarvis,5 the diluent of the reaction mixture is removed
4 Rather than reiterate the respective positions advanced by the examiner and appellant, we refer to the
examiner’s answer and to appellant’s brief for a complete exposition thereof.
5 See, e.g., col. 2, lines 15-33.
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