Appeal No. 1997-0845
Application 08/284,902
when taken with Walker or over Walker alone.2 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
found in the prior art and 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 Rouffet, 149 F.3d 1350, 1358, 47
USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics, Inc., 75
F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); 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.
Appealed claim 1 requires setting the middle burner of a prior art apparatus used to prepare a
porous silica glass preform of a double-core optical fiber “at such a position that the extension of the
nozzle axis thereof does not intersect with the axis of rotation of the growing porous silica glass body
with a displacement distance defined by the value X/D which is in the range from 0.01 to 0.5” while “the
extension of the nozzle axis of each of the lowermost and uppermost burners intersecting with the axis of
rotation of the growing porous silica glass body.” The position taken by the examiner in both grounds of
rejection is based on his finding with respect to Walker that
[h]aving two burners which intersect at 90 degrees and interacting [as taught in Walker (col.
2, lines 65-68)] could not result in having both burners intersecting the axis of rotation; this is
because as the fiber preform grows, there would be no interaction between the two burners
if they did intersect the axis. See the enlarged version of Walker figure 2 which shows a X/D
ratio near 0.32. [Answer, page 5; see also pages 8-9.]
Appellants submit that while Walker
states that the [burners] should be close enough so that the flames of the adjacent [burners]
interact near the surface . . . (col. 4, lines 64-66)[,] [t]his does not necessarily mean that the
axes of the [burners] do not intersect the axis of rotation . . . . The attempted projection of
Fig. 2 . . . is not relevant since this figure doe not purport to be dimensionally accurate.
2 Powers and Walker are cited at page 3 of the answer.
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