Appeal No. 2000-0821 Application 08/886,504 and 13 through 17, 19 and 202 further in view of the state of the prior art admitted by appellants in the specification (background of the Invention). For the reasons pointed out by appellants in the brief, the examiner has failed to make out a prima facie case with respect to both grounds of rejection. 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 Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997), In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989), the plain language of appealed claim 1 requires that the claimed method comprises at least the steps of removing a thermal-insulating ceramic layer bonded to a component having a cooling hole through a specified bond coat, from said component including the cooling hole, by (1) subjecting the ceramic layer to a caustic solution “at a temperature and pressure sufficient to cause the caustic solution to attack a chemical bond between the ceramic layer and the bond coat; and [(2)] then removing the portion of ceramic layer from the cooling hole by directing into the cooling hole a fluid stream” as specified, such that the latter step does not remove the bond coat from the wall of the cooling hole. 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); In re Fritch, 972 F.2d 1260, 1265- 66, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992); In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Laskowski, 871 F.2d 115, 10 USPQ2d 1397 (Fed. Cir. 1989); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988). We agree with appellants that the combined teachings of Ault and McComas would not 2 Answer, pages 3-8 as numbered from unnumbered page 1. - 2 -Page: Previous 1 2 3 4 5 NextLast modified: November 3, 2007