Appeal No. 1997-1735
Application 08/391,668
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.
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 as a whole because he has not provided evidence
and/or scientific evidence in the record (answer, pages 4 and 5-6) explaining how one of ordinary skill
in this art would have modified either the acknowledged prior art filter shown in specification Figures 4
and 73 or one or more of the Harms Figures according to the teachings in Harms in order to arrive at
the air filter configured as specified in the appealed claims. The appealed claims, as represented by
claim 1, require that relative to a central plane, there are alternating high and low peaks on both the
upstream and downstream sides of the filter element, with claim 3 further specifying the widths of the
panels in series which would characterize this arrangement. See, e.g., specification FIG. 6. Harms
would have taught one of ordinary skill in this art to “form a plurality of crests and valleys with
successive long folds being spaced by at least one of the short folds, thus maintaining the
upstream crests of the long folds in spaced relationship to each other and increasing the
downstream density of the formed filter medium” (col. 1, lines 47-51; emphasis added). We find that
Harms further discloses with respect to Figure 3 thereof that while “long folds 27 having crest portions
3 See In re Nomiya, 509 F.2d 566, 570-71, 184 USPQ 607, 611-12 (CCPA 1975).
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