Appeal No. 1998-1569
Application 08/485,081
Higuchi in view of Bohne and Pistor and Stubbe or Taniguchi.1,2 For the reasons pointed out by
appellant in the brief, the examiner has failed to make out a prima facie case with respect to these
grounds of rejection.
A prima facie case of obviousness is established by showing that some objective
teaching, suggestion or motivation in the applied prior art taken as a whole and/or knowledge
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 appellant’s 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,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Warner, 379 F.2d 1011, 1014-17, 154
USPQ 173, 175-78 (CCPA 1967).
Upon carefully considering the combined teachings of Gomersall, Higuchi and Bohne as
explained by the examiner, which is the common core of the prior art applied in each of the
grounds of rejection, it appears that the examiner’s position is that these teachings would have
reasonably suggested to one of ordinary skill in this art that the Al-Si alloy of Gomersall and of
Higuchi would be used to coat the underground pipe of Bohne even though the examiner finds
that the latter reference “discloses an underground pipe being protected by an anode layer, which
can be of Al alloy . . . because it would have been obvious to apply the conventional coating
technique to any metal substrate vulnerable to corrosion” and “[a]n underground pipe, as shown
by Bohne, is clearly vulnerable to corrosion” (answer, pages 4-5). We determine that while one
of ordinary skill in this art would certainly have expected an underground pipe to be vulnerable
to corrosion as the examiner states, as appellant points out in the brief (pages 12-14), the prior art
as applied by the examiner does not provide a factual foundation establishing that this person
would have used the Al-Si alloy of Gomersall and of Higuchi, which are disclosed to be useful in
other environments, to coat the pipe of Bohne. Indeed, that portion of Bohne on which the
examiner relies, would have taught one of ordinary skill in this art that the Al alloy is used in a
1 The appealed claims 5 through 19 are all of the claims in the application. See specification,
pages 16-18 and 20 and October 15, 1996 (Paper No. 6) and May 12, 1997 (Paper No. 12).
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