Appeal No. 1997-1371
Application 08/213,290
back into the ozone bleaching stage. The examiner argues, nonetheless: 3
It would have been obvious to the artisan that some of the unreacted oxygen that
would be present in the ozone reactor exhaust gas of Griggs et al. could be
recycled to the oxygen bleach stage of Griggs et al. [And that] Normally only
ordinary skill is involved in the recycling of unreacted or incompletely processed
materials back to earlier stages of the process. In re Korpi 73 USPQ 229; Ex parte
Brown 65 USPQ 531.4
Thus, the examiner relies solely upon the skill of the artisan to establish
obviousness of the claimed invention. However, in order to reach a conclusion that the
claimed subject matter, as a whole, would have been obvious to one of ordinary skill in the
art, case law requires that there be some teaching, suggestion, or inference in the prior art
or knowledge generally available to one of ordinary skill in the relevant art which would
have led one skilled in the art to combine the relevant teachings of the prior art to arrive at
the claimed subject matter. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d
281. 293, 297 n.24, 227 USPQ 657, 667 n.24 (Fed. Cir. 1985), cert. denied, 475 U.S.
1017 (1986); citing ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221
USPQ 929, 933 (Fed. Cir. 1984). Herein, the examiner posits that “[N]ormally only
ordinary skill is involved in the recycling of unreacted or incompletely processed materials
back to earlier stages of the process” citing In re Korpi, supra and Ex parte Brown, supra.
We have no doubt that recycling is
3 See Griggs, Fig. 2 (item 70), col. 20, lines 6-13; and Friend, col.1, lines 9-13.
3November 5, 1996 Examiner’s Answer, page 6, paragraph 1.
4
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