Appeal No. 1997-1798
Application 08/311,298
settled that in order to establish a prima facie case of obviousness, “[b]oth the suggestion and the
reasonable expectation of success must be found in the prior art, not in applicant’s disclosure.” In re
Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991), citing In re Dow Chem. Co.,
837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988). Thus, a prima facie case of
obviousness is 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
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).
The examiner has not provided any evidence in the form of patent and non-patent literature or
of knowledge generally available to one of ordinary skill in this art to support his position that one of
ordinary skill in the art would have modified the porous membranes prepared by a sol-gel method
containing a supported precious metal catalyst for reaction and separation of gases as disclosed by Abe
(e.g., col. 2, lines 56-58, e.g., col. 3, line 37) by using the catalytic metals specified in appealed claims 1
and 6, stating only that this person would “have desirably chosen any catalytic components depending
on the utility of the catalyst” (answer, page 4; see also pages 4-5).
Thus, it is clear that the examiner has improperly indulged in hindsight by relying on appellants’
invention in reaching his conclusion that the invention encompassed by the appealed claims would have
been obvious to one of ordinary skill in this art in view of Abe. See Rouffet, supra (the specific
understanding or principal within the knowledge of one of ordinary skill in the art leading to the
modification of the prior art in order to arrive at appellants’ claimed invention must be explained); Dow
Chem., 837 F.2d at 473, 5 USPQ2d at 1531-32.
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