Appeal No. 1997-0845
Application 08/284,902
Consequently, the Examiner’s attempted extrapolation as to whether there is, in fact, any
displacement of the burners from interception of the axis of rotation of the growing body has
no basis in fact and cannot, indeed, be derived from the drawings or the description in this
reference. [Brief, page 7.]
Upon carefully reviewing the record, we must agree with appellants that the examiner has failed
to make out a prima facie case of obviousness of the claimed invention as a whole as encompassed by
the appealed claims. It is well settled that in evaluating the teachings of a reference, we must consider
the specific teachings thereof and the inferences one of ordinary skill in this art would have reasonably
been expected to draw therefrom. See, e.g., In re Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d
1780, 1782-83 (Fed. Cir. 1992); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA
1968). We find that the examiner has not provided evidence and/or scientific reasoning in the record
explaining why one of ordinary skill in this art would have reasonably inferred from the disclosure of
Walker as a whole, that is, the specification and figures thereof, the alleged teaching that burners should
be set “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” as required by claim 1. We find no reasonable basis
for such an inference in the cited disclosure of Walker. Indeed, while it appears from Walker Fig. 2 that
the nozzle axes of the two burners intersect at a point other than the axis of rotation of the workpiece, it
is not apparent that one of ordinary skill in this art would have reasonably inferred from this illustration
that the nozzle axis of one or more burners should be offset from the axis of rotation when considered in
view of the absence of any direction to do so in the specification and the intersection of the burner
nozzle axes at the axis of rotation of the workpiece in Walker Figs. 6 and 7.
Thus, it is manifest that the only direction to appellants’ claimed invention as a whole on the
record before us is supplied by appellants’ own specification.
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