Appeal No. 1998-1073
Application 08/488,521
generally available to one of ordinary skill in the art would have led that person to the claimed invention
as a whole, including each and every limitation of the claims, without recourse to the teachings in
appellants’ disclosure. See generally, In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458
(Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573, 37
USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re Oetiker, 977 F.2d 1443, 1447-48, 24 USPQ2d
1443, 1446-47 (Fed. Cir. 1992) (Nies, J., concurring); In re Fine, 837 F.2d 1071, 1074-76, 5
USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d
1529, 1531 (Fed. Cir. 1988) (“The consistent criterion for determination of obviousness is whether the
prior art would have suggested to one of ordinary skill in the art that [the claimed process] should be
carried out and would have a reasonable likelihood of success viewed in light of the prior art. [Citations
omitted] Both the suggestion and the expectation of success must be founded in the prior art, not in the
applicant’s disclosure.”). This same criteria for prima facie obviousness also applies where a single
reference is applied. See generally, B.F. Goodrich Co. v. Aircraft Braking Sys. Corp., 72 F.3d
1577, 1582, 37 USPQ2d 1314, 1318 (Fed. Cir. 1996) (“When obviousness is based on a particular
prior art reference, there must be a showing of a suggestion or motivation to modify the teachings of that
reference. [Citation omitted.] This suggestion or motivation need not be expressly stated. [Citation
omitted.]”); In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976) (“The fact that
neither of the references expressly discloses asymmetrical dialkyl moieties is not controlling; the question
under 35 USC 103 is not merely what the references expressly teach, but what they would have
suggested to one of ordinary skill in the art at the time the claimed invention was made.”)
We have difficulty in finding that one of ordinary skill in this art would have found in Sakakibara
et al. alone or in combination with knowledge generally available to one of ordinary skill in the art, all of
the elements of the claimed method encompassed by appealed claim 1. The most troubling is the matter
of whether one of ordinary skill in this art would have modified the apparatus discussed in the patent
specification of and shown in the figures of Sakakibara et al. to include means for “applying a negative
pressure” at the outlet of the fluidized bed “contained zone” as required by this claim, as the reference
does not disclose applying negative pressure to the fluidized bed, and FIGs. 1 and 5 provide no
disclosure as to the structure of the upper end of the fluidized bed in the apparatus shown therein (e.g.,
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