Appeal No. 1997-0664
Application No. 08/280,945
skill in the art to add urea to Holley’s spent pickling acid
before it is sprayed into reaction chamber, as suggested by
Burton, in order to remove undesirable NO compounds (answer,
x
pages 5-6). The examiner further reasons that one of ordinary
skill the art would have added urea to the spent pickling acid
before it is sprayed into the reaction chamber in order to
require the use of only one spray nozzle, thereby minimizing
capital costs (answer, page 6). We disagree.
Under 35 U.S.C. § 103, the examiner carries the initial
burden of establishing a prima facie case of obviousness.
In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88
(Fed. Cir. 1984). As part of meeting this initial burden, the
examiner must determine whether the differences between the
subject matter of the claims and the prior art “are such that
the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill
in the art” (emphasis added). 35 U.S.C. § 103(a)(1999);
Graham v. John Deere Co., 383 U.S. 1, 14, 148 USPQ 459, 465
(1966).
When multiple prior art references are combined to
support an obviousness rejection, there must be some teaching,
suggestion, or motivation in the prior art that would have led
one of ordinary skill in the art to combine the references.
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