Ex parte SCHAUBER - Page 4


                 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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