Appeal No. 1997-0551
Application 08/157,429
To establish a prima facie case of obviousness, an
examiner must explain why the teachings of the prior art would
have suggested the claimed subject matter to one of ordinary
skill in the art. See In re Rinehart, 531 F.2d 1048, 1051,
189 USPQ 143, 147 (CCPA 1976). The mere fact that the prior
art
could be modified as proposed by the examiner is not
sufficient
to establish a prima facie case. See In re Fritch, 972 F.2d
1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992).
Significantly, we additionally find that the claimed
process is limited to a catalyst containing an oxide, halogen
and at least one element as variously specified in the
appealed claims. The examiner’s supposition that a
halogenated oxide as claimed would include products wherein no
oxygen remains (answer, page 5) is not in accord with the
plain meaning of the claim language requiring an oxide, albeit
a halogenated one. That construction is consistent with the
appellants’ specification (see, e.g., pages 2-8) and arguments
(reply brief, pages 2, 3, 7 and 8). In this regard, it is
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