Appeal No. 1997-1793
Application No. 08/528,044
have used the methods of Kleinschmit et al. to make
Ti/Fe mixed oxides of Hattori, for instance because
the flame hydrolysis apparatus may be more readily
available or produce the mixed oxide more
economically.
In the absence of any showing of unexpected
results, it would have been obvious to have combined
varying proportions of iron oxide and titania in
order to vary the color or the catalytic activity of
the powders of Hattori mad[e] by the process
suggested by Kleinschmit et al. Still further, it
would have been obvious to one of ordinary skill in
the art to have used the thus obtained particles in
cosmetics as is suggested by Ishihara in the absence
of any showing of unexpected results. [Answer, pp.
3-4; italics original, bolded italics added.]
Thus, a principal question raised in this appeal is
whether the collective teachings of the applied prior art
references would have led one of ordinary skill in the art to
use
Kleinschmit’s pyrogenic method in the production of Hattori’s
binary oxides. We answer this question in the negative.
To properly reject claims under 35 U.S.C. § 103 as prima
facie obvious in view of a combination of prior art
references, the examiner must consider, inter alia, two
factors: (1) whether the prior art would have suggested to one
of ordinary skill in the art to make the claimed composition
or carry out the claimed process; and (2) whether the prior
art would also have revealed that, in so making or carrying
out, the person of ordinary skill would have had a reasonable
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