Appeal No. 1998-1569
Application 08/485,081
sacrificial anode that is separated from the surface of the pipe by protective coatings (col. 2, line
51, to col. 4, line 12; see answer, page 4), and thus, at best, the combined teachings of the
references would have reasonably suggested the use of the Gomersall and Higuchi alloys in the
sacrificial anode rather than in a coating on the pipe, which is not the claimed invention. See
Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1050-54, 5 USPQ2d 1434, 1438-41 (Fed.
Cir. 1988). Accordingly, because the examiner has not shown that 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, we are constrained to reverse the grounds of
rejection.
The examiner’s decision is reversed.
REMAND TO THE EXAMINER
The examiner should consider the issue of whether the claimed invention as a whole
would have been obvious over the state of the prior art as acknowledged by appellant in the
specification, including the United States Patents cited in support of the acknowledgment (pages
2-4). Cf. In re Nomiya, 509 F.2d 566, 570-71, 571 n.5, 184 USPQ 607, 611, 611 n.4 (CCPA
1975) (“We see no reason why appellants’ representations in their application should not be
accepted at face value as admissions that Figs. 1 and 2 may be considered “prior art” for any
purpose, including use as evidence of obviousness under § 103. [Citations omitted.] By filing an
application containing Figs. 1 and 2, labeled prior art, ipsissimis verbis, and statements
explanatory thereof, appellants have conceded what is to be considered as prior art in
determining obviousness of their improvement.”). We note that appellant states that the problem
of protecting iron pipes used for transportation of materials in different environments from
corrosion was known in the art, see Nomiya, 509 F.2d at 574, 184 USPQ at 613 (“The
significance of evidence that a problem was known in the prior art is, of course, that knowledge
of a problem provides a reason or motivation for workers in the art to apply their skill to its
solution.”), and acknowledges the following solutions to such problems (specification, pages 2-
3):
2 Answer, pages 4-6.
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