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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