Appeal No. 2000-1019
Application No. 08/623,852
fails to show that, as of the application filing date, the
appellants had possession of the now claimed process of rendering
“one or more additional metal values insoluble.” For this
reason, we will affirm the rejection of independent claim 1 under
35 U.S.C. §112, 1st paragraph, and correspondingly, of dependent
claims 2 through 13.
REJECTION OF CLAIMS 1 THROUGH 13
UNDER 35 U.S.C. §103(a) OVER BENDER IN VIEW OF PAZDEJ
The non-obviousness requirement of 35 U.S.C. § 103(a)
provides that
[a] patent may not be obtained though the invention is
not identically disclosed or described as set forth in
section 102 of this title, if the differences between
the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would
have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said
subject matter pertains.
The examiner bears the initial burden of factually
supporting a prima facie case of obviousness. In re Rijckaert,
9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). The
teachings of a prior art reference that discloses a range that
touches the range recited in the claim renders the claimed
invention prima facie obvious. In re Malagari, 499 F.2d 1297,
1303, 182 USPQ 549, 553 (CCPA 1974). Even though an applicant’s
12
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