Appeal No. 1997-1916
Application 08/375,507
above-mentioned additive,” in the specification (page 7, lines 10-11) as describing “a way of making the
coating layer permeable to air that does not require a separate pore forming agent” (brief, page 7). We
agree with appellant that this section of the specification provides support for the stated negative
limitation of claim 1. Accordingly, we reverse this ground of rejection.
We will also not sustain the ground of rejection of the appealed claims under 35 U.S.C. § 103
over Amemiya et al. in view of the definition of “silica” in The Condensed Chemical Dictionary.2 It is
well settled that in order to establish a prima facie case of obviousness, “[b]oth the suggestion and the
reasonable expectation of success must be founded in the prior art, not in the applicant’s disclosure.” In
re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991), citing In re Dow Chemical
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 appellant’s disclosure. See generally, 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).
We agree with appellant (brief, page 10) that the examiner has failed to carry his burden of
making out a prima facie case of obviousness with respect to the claimed invention. As appellant
points out, the combined teachings of Amemiya et al. and the definition of “silica” in The Condensed
Chemical Dictionary would not have reasonably suggested to one of ordinary skill in this art that silica
should be added to the compositions of Amemiya et al. (id., pages 10-11). Indeed, even if there was,
as noted by appellant, silica “is only one component of natural stone” (id.), and thus the incorporation of
silica in the compositions of Amemiya et al would not result in the claimed invention. Uniroyal, Inc. v.
Rudkin-Wiley Corp., 837 F.2d 1044, 1050-54, 5 USPQ2d 1434, 1438-41 (Fed. Cir. 1988).
Thus, it is manifest that the only direction to appellant’s claimed invention as a whole on
2 The references relied on by the examiner are listed at page 2 of the answer.
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