Appeal No. 1997-0545
Application 08/224,063
However, based on the evidence of the overlap in temperature ranges between the temperature
range of above about 50°C in which heat can not be externally supplied as specified in the claimed
process encompassed by claim 92 and the range of 48° to about 55°C in the processes taught in Olson,
that includes temperatures at which the heat can be externally supplied, we find that, in the absence of a
showing of criticality of the range of temperature above about 50°C, that is, about 50°C to about 55°C,
for the claimed process, the claimed process encompassed by claim 92 is prima facie obvious as a
whole over this reference. See Woodruff, supra; Wertheim, supra.
We similarly find on this same evidence in Olson that the claimed process encompassed by
appealed claim 7 would have been prima facie obvious as a whole over the combined teachings of
Olson and Schumann as applied by the examiner (answer, pages 9-10). Indeed, we are reinforced in
view by the disclosure in Schumann that the temperature of the reaction mixture of an alkali metal silicate
and an alkali metal hydroxide can initially be raised to between 45° and 48°C without influencing the
exothermic reaction, and thus one of ordinary skill in this art would have found in the combination the
reasonable suggestion to add the phosphonates of Schumann with the mixtures including acrylic acid
polymerizates of Olson with the reasonable expectation of arriving at the claimed invention. See In re
Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531(Fed. Cir. 1988) (“Both the
suggestion and the expectation of success must be found in the prior art, not in the applicant’s
disclosure.”).
Accordingly, since the examiner has established a prima facie case of anticipation and
obviousness of claim 92 with respect to Schumann, and a prima facie case of obviousness of claim 92
with respect to Olson and of claim 107 with respect to the combined teachings of Olson and Schumann,
the burden of going forward has shifted to appellants to submit argument or evidence in rebuttal. In
view of the argument and evidence in rebuttal presented in appellants’ main and reply briefs, the
patentability of the claimed invention as a whole must again be assessed based on the record as a
whole, including all the evidence of anticipation and non-anticipation and of obviousness and
nonobviousness, giving due consideration to the weight of appellants’ arguments. See, e.g., Oetiker,
supra; Spada, supra.
- 6 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007