Appeal No. 1997-3892
Application 08/421,379
473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988) (“Both the suggestion and the expectation of success
must be founded in the prior art, not in the applicant’s disclosure.”); In re Keller, 642 F.2d 413, 425,
208 USPQ 871, 881 (CCPA 1981)(“The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that
the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to those of ordinary skill in the
art.”); see also In re O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673, 1680-81 (Fed. Cir. 1988)
(“Obviousness does not require absolute predictability of success. . . . There is always at least a
possibility of unexpected results, that would then provide an objective basis for showing that the
invention, although apparently obvious, was in law nonobvious. [Citations omitted.] For obviousness
under § 103, all that is required is a reasonable expectation of success. [Citations omitted.]”).
Accordingly, in view of the prima facie case of obviousness thus made out with respect to
appealed claims 1 through 4 and 9 through 12, the burden of going forward has shifted to appellants to
submit argument and/or evidence in rebuttal. See generally, In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984).
We have again carefully evaluated all of the evidence of obviousness and nonobviousness based
on the record as a whole, giving due consideration to the weight of appellants’ arguments of record,
including the declaration of Appellant Iverson,4 as they pertain to the new ground of rejection which we
have entered above. Appellants frame the issue in this appeal as whether Alexander is analogous prior
art (brief, page 2), which, of course, carries with it the issue of the teachings and inferences that one of
ordinary skill in this art would have been reasonably expected to draw from the disclosure of this
reference. We have again considered our analysis of Alexander above in light of appellants’ contention
that the use of zinc salt is disclosed in the
reference “only with a particular control of the pH of the sludge mixture” (brief, e.g., page 4; reply brief,
page 4) and that the reference thus teaches away from the claimed invention because it “discloses no
In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on the part of
this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
4 The declaration was submitted on November 16, 1995 (Paper No. 5).
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