Appeal No. 1997-0493
Application 08/336,353
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 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 Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir.
1988); Dow Chemical, supra.
We reverse the grounds of rejection advanced on appeal because the prior art as applied by the
examiner does not address the limitation of claim 1, and thus present in all of the appealed claims, that
the electrolyte must be in the form of a deoxygenated gel. We interpret the term “deoxygenated gel
electrolyte” in light of appellants’ specification as it would be interpreted by one of ordinary skill in this
art to have its ordinary meaning of a gel electrolyte that is deoxygenated. See In re Morris, 127 F.3d
1048, 1054, 44 USPQ2d 1023, 1027, 1029 (Fed. Cir. 1997). Indeed, appellants disclose that the
deoxygenated electrolyte can be “prepared by bubbling inert gas through an electrolyte solution and
maintaining the elctrolyte in an inert atmosphere during the gelling process” (specification, page 7).
Appellant submits, inter alia, that the “use of a deoxygenated gel electrolyte . . . is not addressed by the
Examiner and is not mentioned in any of the cited references” (brief, page 10; original emphasis
omitted).
We agree with appellant that the examiner has not addressed this issue in the answer. In
reviewing the prior art as applied by the examiner, we find no direction in Tench to deoxygenate the
electrolyte solution employed in the methods disclosed therein (e.g., col. 1, line 57, col. 3, lines 26-29,
and col. 5, lines 38-57). We find that Tench discloses that “[r]eservior 50 contains an electrolyte
solution 52 and an inert gas 54, such as argon, above electrolyte 52” that is “used to flush air from the
system to eliminate . . . data caused by the presence of oxygen” (col. 5, lines 40-52; emphasis
supplied). We find no disclosure in Baxter and Riggs which would suggest deoxygenating the
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