Appeal No. 2000-1850
Application 09/098,822
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 appellant’s 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.
As an initial matter, 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 1 requires “heating the cured shape to a temperature in the range of greater than 1450°C to
1800°C for a time effective to convert the ceramic matrix precursor into a crystal containing
ceramic” (emphasis supplied). Appellant has set forth in the written description in the
specification that “[b]y ‘crystal containing’ it is meant that the matrix is comprised of phases of
beta silicon carbide and optionally beta silicon nitride where said phases are not the result of any
fillers in the ceramic matrix precursor” (page 6, lines 1-4; emphasis supplied). Accordingly, we
must interpret the term “crystal containing” in claim 1 in the manner that appellant has defined it.
See Morris, supra (“[T]he PTO applies to the verbiage of the proposed claims the broadest
reasonable meaning of the words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way of definitions or
2 Answer, pages 4-5.
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