Appeal No. 1998-1832
Application No. 08/434,331
the specification of the portion of Figure 1, from page 6, line 12 through page 8, line
17 fully describes the “second recovery installation.”
Based on these findings, we conclude that the specification provides a reasonable
standard for understanding the metes and bounds of the phrase, supra when the claim is
read in light of the specification. Seattle Box Co. v. Industrial Crating & Packing,
Inc., 731 F.2d 818, 826, 221 USPQ 568, 573-74 (Fed. Cir. 1984). Accordingly, we
reverse the rejection of the examiner.
The Rejections under 35 U.S.C. § 103
“[T]he examiner bears the initial burden, on review of the prior art or on any
other ground, of presenting a prima facie case of unpatentability,” whether on the
grounds of anticipation or obviousness. In re Oetiker , 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). On the record before us, the examiner relies
upon a combination of up to seven references to reject the claimed subject matter and
establish a prima facie case of obviousness. The basic premise of the rejection is that it
would have been obvious to one of ordinary skill in the art, to use different recovery
installations, e.g., dissolving tanks and different recovery sections of the recovery boiler,
for each of the different effluents recovered by Henricson. See Answer, page 4. We
disagree. Our initial inquiry is directed to the scope of the claimed subject matter.
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