Appeal No. 1997-3503
Application No. 08/172,866
prima facie case of obviousness.” However, appellants argue (Reply Brief,
bridging paragraph, pages 6-7) that “Asakura et al. teach that the precipitation
which occurs in a period of one hour is considered to be at an appropriate
precipitation speed and the precipitation which occurs more rapid than that
speed is not considered preferable by Asakura et al.” Appellants conclude
(Reply Brief, page 7) that “Asakura et al. do not provide any motivation for the
promotion of the precipitation, and if there is such a motivation, it would
contradict the teachings of Asakura et al.”
The examiner argues (Supplemental Answer, page 3) that “[t]he excerpt
referred to by appellants states that the disclosed particles ‘precipitate at a
moderate rate of precipitation’ … and that such particles ‘are satisfactory’ … no
teaching of ‘an appropriate precipitation speed’ as alleged by appellants can be
found.” Therefore, the examiner argues (Supplemental Answer, bridging
sentence, page 4) that Asakura “certainly would not contradict any suggestion in
the prior art to increase the rate of precipitation by magnetic separation, as
alleged” by appellants.
While we agree with the principles set forth in appellants’ case law
citations (Brief, pages 22-24), appellants’ failed to explain how these principles
apply to the instant rejection. In our opinion, the examiner met her burden of
establishing a prima facie case of obviousness after consideration of the claimed
invention as a whole. Accordingly, we affirm the examiner’s rejection of claims
29, 31, 35-40, 42 and 46-49 under 35 U.S.C. § 103 over Asakura in view of ‘622.
Claims 32, 33, 43, 44 and 50-53:
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