Appeal No. 1997-2947
Application No. 08/352,079
Appellants’ Appeal Brief and Reply Brief
1. The Rejection over Patil or Dunne
Appellants’ contend that both Patil and Dunne teach away from the claimed 10 to 50 mm
distance between catalyst A and adsorption catalyst B. We concur.
It is well settled that “a prima facie case of obviousness is established when the teachings
from the prior art itself would appear to have suggested the claimed subject matter to a person of
ordinary skill in the art." In re Bell, 991 F.2d 781, 782, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993)
(quoting In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976)). Any
motivation to modify the prior art references must flow from some teaching in the art that
suggests the desirability or incentive to make the modification needed to arrive at the claimed
invention. In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed Cir. 1995); In re
Gorman, 933 F.2d 982, 986-87, 18 USPQ2d 1885, 1888, (Fed. Cir. 1991)(“When it is necessary
to select elements of various teachings in order to form the claimed invention, we ascertain
whether there is any suggestion or motivation in the prior art to make the selection made by the
applicant. [Citations omitted] ... The extent to which such suggestion must be explicit in, or may
be fairly inferred from, the references, is decided on the facts of each case in the light of the prior
art and its relationship to the applicant’s invention.”).
Both Patil and Dunne are directed to catalytic converters having a three-way catalyst and
a separate adsorption catalyst. The references are silent as to the exact distance between the
three-way catalyst and the adsorption catalyst. Yet, both references are quite clear as to how the
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