Appeal No. 2000-0002
Application 08/848,477
appellant's invention and compare it to the prior art. The
decision in Fitzgerald, relied on by the examiner, is such a
case. But the court has made it clear that it is only where
the facts establish that appellant is treating the same
materials, or essentially the same materials, to the same
steps, or essentially the same steps, as does the prior art,
that there is a reasonable basis to presume that appellant
only achieves what the prior art achieves, and the alternative
§102/103 rejection is sanctioned. See In re Woodruff, 919 F.2d
1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990); In re
Spada, 911 F.2d 705, 708, 709, 15 USPQ2d 1655, 1657, 1658
(Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255, 195 USPQ
430, 433, 434 (CCPA 1977).
Here, not only has the examiner failed to read the
disclosure of McElroy on the claimed steps used to prepare
appellant's product-by-process, but the examiner has conceded
that McElroy does not describe appellant's method for
preparing his product. See pages 4 and 6 of the Answer.
Apparently, it is the examiner's position that appellant is
claiming hematite and McElroy discloses preparing hematite.
Hematite is defined in the various literature and chemical
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