Appeal No. 1999-1244
Application 08/453,003
carried out and would have a reasonable likelihood of success viewed in light of the prior art. [Citations
omitted] Both the suggestion and the expectation of success must be founded in the prior art, not in the
applicant’s disclosure.” In re Dow Chem. 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 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); B.F. Goodrich Co. v. Aircraft Braking Sys. Corp., 72
F.3d 1577, 1582, 37 USPQ2d 1314, 1318 (Fed. Cir. 1996) (“When obviousness is based on a
particular prior art reference, there must be a showing of a suggestion or motivation to modify the
teachings of that reference. [Citation omitted.] This suggestion or motivation need not be expressly
stated. [Citation omitted.]”); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600
(Fed. Cir. 1988); Dow Chem., 837 F.2d at 473, 5 USPQ2d at 1531-32.
We find that, when considered in light of the written description in the specification as
interpreted by one of ordinary skill in this art, see, e.g., In re Morris, 127 F.3d 1048, 1054-55, 44
USPQ2d 1023, 1027 (Fed. Cir. 1997), the plain language of appealed claim 14 requires in step “(d)
ceasing said oxidation when the concentration of oxygen in said gaseous reaction products increases at
a predetermined rate,” which “gaseous reaction products” are vented from the vessel in step (c). We
have carefully compared this requirement of the claimed process with the disclosure of Hershmann
Example 4 as explained by the examiner and in light of appellants’ arguments. While we agree with the
examiner that the samples taken every half hour from the autoclave would have been analyzed to
monitor the course of the reaction, we find no teaching within this reference which would have led one
of ordinary skill in this art to modify the process of the reference by monitoring the reaction gases and
using that information in the manner required by the claims, and the examiner has not established that
knowledge in the art would have provided such a suggestion. Accordingly, we cannot subscribe to the
examiner’s reasoning and thus must reverse the rejection.
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