Appeal No. 1998-2337
Application 08/651,442
769, 775 (Fed. Cir. 1983) (“The inherent teaching of a prior art reference, a question of fact, arises
both in the context of anticipation and obviousness.”). In the absence of an explanation by the
examiner, we find no disclosure in Blake, Freeman, Riseman or in Stricker, separately and as combined
with Biles by the examiner which would cure the deficiencies we have identified in Biles. Indeed, with
respect to the ground of rejection of claim 4, the examiner has not explained why one of ordinary skill in
this art would have found in the combined teachings of Biles and Riseman the objective teaching,
suggestion or motivation to use the pH sensitive glass electrode of Riseman as the “pH electrode . . . of
conventional construction” in the apparatus of Biles, including the interaction between this electrode and
the circuitry disclosed in Biles which controls the flow of the plating current. In similar manner, the two
grounds of rejection based on the combined teachings of at least Blake, Riseman and Biles also requires
that Biles indeed possess the disclosure as relied on by the examiner, because otherwise there is no
objective teaching, suggestion or motivation in the combined teachings of these references to substitute
the pH sensitive glass electrode of Riseman for the conventionally constructed calomel reference
electrode of Blake.
Accordingly, we find that the examiner has not make out a prima facie case of obviousness of
the claimed apparatus encompassed by claim 1 under § 103 over the combined teachings of Biles and
the other references as applied, and thus we reverse these grounds of rejection.
Finally, with respect to the ground of rejection of claim 3 under § 112, first paragraph, it is well
settled that under this statutory provision, the examiner has the burden of providing a reasonable
explanation, supported by the record as a whole, why the assertions as to the scope of objective
enablement set forth in the specification are in doubt, including reasons why the description of the
invention in the specification would not have enabled one of ordinary skill in this art to practice the
claimed invention without undue experimentation, in order to establish a prima facie case under the
enablement requirement of the first paragraph of § 112. See In re Wright, 999 F.2d 1557,
1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993); In re Strahilevitz, 668 F.2d 1229, 1232, 212
USPQ 561, 563 (CCPA 1982); In re Marzocchi, 439 F.2d 220, 223-24, 169 USPQ 367, 369-70
(CCPA 1971). It is further well settled that “[a]n inventor need not . . . explain every detail [of the
invention] since he is speaking to those skilled in the art. What is conventional knowledge will be read
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