Ex Parte GROSSKLAUS et al - Page 2


               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.                                                               

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