Appeal No. 1997-1613
Application 08/109,646
problem known in the catalytic converter art which appellants are attempting to solve. See In re Clay,
966 F.2d 656, 23 USPQ2d 1058, 1060-61 (Fed. Cir. 1992). We agree with appellants (brief, e.g.,
pages 13-15) that the examiner’s contention that these references disclose materials “used to protect
another material from high temperature situations” (answer, page 8) fails to establish that the reference
are reasonably pertinent. Id. (“A reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor’s endeavor, it is one which, because of the matter with which it
deals, logically would have commended itself to an inventor’s attention in considering the problem. Thus,
the purposes of both the invention and the prior art are important in determining whether the reference is
reasonably pertinent to the problem the invention attempts to solve.”). We find that the fact that the
claimed invention, Merry and Wagner et al. and both of Luckanuck and Peterson et al. are globally
related with respect to protecting a material from high temperatures would not have provided one of
ordinary skill in this art with the reasonable suggestion and expectation of success to use the materials
taught in Luckanuck and/or Peterson et al. to solve the art recognized problem. See In re Dow
Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531(Fed. Cir. 1988) (“Both the suggestion
and the expectation of success must be founded in the prior art, not in the applicant’s disclosure.”);
Clay, supra.
Thus, on this record, the examiner has not establishing a prima facie case of obviousness 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 this 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 Laskowski, 871 F.2d 115, 10
USPQ2d 1397 (Fed. Cir. 1989); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600
(Fed. Cir. 1988); Dow Chemical, 837 F.2d at 473, 5 USPQ2d at 1531-32; In re Warner, 379 F.2d
1011, 1014-17, 154 USPQ 173, 176-78 (CCPA 1967).
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