Ex parte KETCHAM et al. - Page 10

                Appeal No. 1997-0448                                                                                                     
                Application No. 08/327,980                                                                                               

                        To establish a prima facie case of obviousness, there must be both some suggestion or                            

                motivation to modify the reference or combine the reference teachings and a reasonable expectation of                    

                success.  Furthermore, the prior art must teach or suggest all the claim limitations.  In re Vaeck, 947                  

                F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991).                                                                    

                        Here, all of the claims ultimately require production of molybdenum trioxide and claims 2-7                      

                and 10-17 specifically require use of an alkali metal solubilizing compound, e.g., sodium or potassium                   

                hydroxide.  Use of a sodium or potassium hydroxide solution as an alternative to an ammonium                             

                hydroxide solution, as suggested by Vertes, results in formation of the corresponding sodium or                          

                potassium molybdate compound.  Vertes explicitly states that the calcination procedure used to                           

                produce molybdenum trioxide from ammonium molybdate cannot be used with potassium and sodium                             
                molybdates.    The examiner does not point out, and we do not find, where Vertes discloses or17                                                                                                          

                suggests how to obtain the required molybdenum trioxide from sodium or potassium molybdate.                              

                Neither Barry nor Chiola disclose or suggest how to convert soluble sodium or potassium molybdate                        

                into molybdenum trioxide.  Rather, the only place we find this disclosure is in the appellants’                          

                specification.  Thus, as to claims 2-7 and 10-17, which all require use of an alkali metal solubilizing                  

                compound, e.g., sodium or potassium hydroxide, we conclude  that the examiner has relied on                              

                impermissible hindsight in making his determination of obviousness.  In re Fritch, 972 F.2d 1260,                        

                        17See Vertes, col. 5, lines 43-48.                                                                               
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