forms a separate patentable group. See Brief, sentence bridging pages 2 and 3.
Accordingly, the above claims stand together on the issue of obviousness, and we
have affirmed the § 102 rejection of independent claim 1 as being anticipated by
Kiyota, supra. It is well settled that the ultimate obviousness is lack of novelty. The
claims cannot have been anticipated and not have been obvious. In re Fracalossi,
681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982). Accordingly, there is no
further need to inquire into the disclosure of the admitted prior art and the
secondary reference to Klein.
As to the balance of the claimed subject matter, in order to arrive at appellants’
invention, one of ordinary skill in the art would have to utilize the process for the
preparation of metal particles taught by Klein and apply it to the metal particles of
Kiyota having an average particle size of 7.1 µm, particularly as Klein is silent both as
to particle size and tap density ratios. However, we find neither motivation nor a
reasonable expectation of success exists to apply a prior art process as taught by
Klein to a comparative example of Kiyota.
The examiner must show reasons that the skilled artisan confronted with the same
problems as the inventor and with no knowledge of the claimed invention would select
the elements from the cited prior art references for combination in the manner
claimed. We determine that there is no reason, suggestion, or motivation to combine
the references in the manner proposed by the examiner. Accordingly, the examiner
has not established a prima facie case of obviousness and the examiner's rejection of
claims 2 and 4 through 6
5
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