Appeal No. 1999-0507
Application 08/407,033
USPQ2d 1023, 1027 (Fed. Cir. 1997), we must agree with appellants that the plain language of
appealed claims 22 and 23 requires that the dispersion of the elemental oxide in the decomposable
carbon-containing compound is introduced into a gas, and thus the required dispersion containing the
metal oxide is formed before, and not after, the introduction step. Indeed, the specification essential
describes two embodiments based on whether the metal oxide or a precursor compound is dispersed in
the decomposable carbon compound prior to the introduction step, and appellants have restricted the
claims to the former embodiment.
Accordingly, since the examiner has not addressed the issue of whether one of ordinary skill in
this art would have modified Yoda by initially adding the metal oxide rather than a precursor to the
dispersion introduced to the gas through one nozzle of the apparatus as described in the reference (e.g.,
col. 8, lines 63-68) in stating and explaining the ground of rejection of record, he has not established a
prima facie case of obviousness 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 appellants’ 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 Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chem.
Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988). Therefore, we reverse this
ground of rejection.
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