Appeal No. 1998-2000
Application 08/469,171
that the claimed powder coatings contain “additives . . . which are customary for producing and using
powder coating,” inter alia,
“tribo-additives,” and are applied by “methods customary for powder coatings, for example by means
of electrostatic spraying devices such as the . . . tribo system” (page 4, line 27, to page 5, line 1, and
page 5, lines 20-24). Indeed, the examiner explains only that even though it may be assumed that
“tribo-additives” are known, “the term is still indefinite since one does [sic, not?] readily recognize what
additives are embraced by this term” (answer, page 4). The fact that extended cogitation may be
necessary for one skilled in this art to comprehend the entire scope of this term does not render the
same prima facie indefinite. See, e.g., In re Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140
(CCPA 1970) (“Breadth is not indefiniteness.”). Accordingly, we reverse this ground of rejection with
respect to claim 2, containing the term “tribo-additive,” because the examiner has not carried the burden
of establishing a prima facie case of non-compliance with § 112, second paragraph, and with respect
to claims 21 and 22 because these claims do not contain the subject term.5
With respect to the rejection of all of the appealed claims under 35 U.S.C. § 103, it is well
settled that in order to establish a prima facie case of obviousness, “[b]oth the suggestion and the
reasonable expectation of success must be founded in the prior art, not in the applicant’s disclosure.” In
re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991), citing In re Dow Chemical
Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988). Thus, 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, 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); Vaeck, supra; Dow Chem., supra; In re Warner, 379 F.2d 1011, 1014-17, 154
5 See above note 2.
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