Appeal No. 1997-0664
Application No. 08/280,945
the applied prior art references suggests that Burton’s urea
would function in Holley’s environments as it would in a
conventional combustion flue gas. In this regard, "[b]oth the
suggestion and reasonable expectation of success must be
founded in the prior art, not in the applicant's disclosure."
In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed.
Cir. 1991)(citing In re Dow Chemical Co., 837 F.2d 469, 473, 5
USPQ2d 1529, 1531 (Fed. Cir. 1988)).
For these reasons, we hold that the applied prior art
references do not establish a prima facie case of obviousness
against appealed independent claims 1, 14, and 25 within the
meaning of 35 U.S.C. § 103. Since appealed claims 3 through
11, 13, 15 through 24, and 26 through 35 all directly or
indirectly depend from one of these independent claims, it
follows that the subject matter of these dependent claims
would also not have been obvious over the applied prior art
references. In re Fine, 837 F.2d 1071, 1076, 5 USPQ2d 1596,
1600 (Fed. Cir. 1988).
The examiner’s 35 U.S.C. § 103 rejections of (i) claims
1, 3, 4, 9 through 11, 13 through 16, 21 through 27, and 32
through 35 as unpatentable over Holley in view of Burton and
Jackson, (ii) claims 5, 6, 17, 18, 28, and 29 as unpatentable
over Holley in view of Burton, Jackson, and Michels, and (iii)
11
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