Appeal No. 1997-4310 Page 5
Application No. 08/371,362
According to the examiner,
it would have been obvious to modify the
Laumann process by providing a strong base
in an aqueous bath as well as providing
sufficient mechanical energy to convert the
paper into a pulp since Savage teaches
recycling waxes [sic, waxed] coating paper
in such a manner for the obvious cost
advantages of recycling wastepaper.
We disagree. When an examiner is determining whether a
claim should be rejected under 35 U.S.C. § 103, the claimed
subject matter as a whole must be considered. See In re
Ochiai, 71 F.3d 1565, 1569, 37 USPQ2d 1127, 1131 (Fed. Cir.
1995). The subject matter as a whole of process claims
includes the starting materials and product made. When the
starting and/or product materials of the prior art differ from
those of the claimed invention, the examiner has the burden of
explaining why the prior art would have motivated one of
ordinary skill in the art to modify or select from the
materials of the prior art processes so as to arrive at the
claimed invention. See Ochiai, 71 F.3d at 1570, 37 USPQ2d at
1131. In the present case, the examiner has not carried this
burden.
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