Appeal No. 2001-2546
Application 09/067,915
reference]. [Citation omitted.]”); cf. In re Spada, 911 F.2d 705, 708-09, 15 USPQ2d 1655, 1657-
58 (Fed. Cir. 1990) (“The Board held that the compositions claimed by Spada ‘appear to be
identical’ to those described by Smith. While Spada criticizes the usage of the word ‘appear’, we
think that it was reasonable for the PTO to infer that the polymerization by both Smith and Spada
of identical monomers, employing the same or similar polymerization techniques, would produce
polymers having the identical composition.”). And, in order to establish a prima facie case of
obviousness of appealed process claims 3, 4 and 7, the examiner must show that one of ordinary
skill in this art would have modified the processes of each of Zirngibl, Saladin and Hori, each
separately combined with Jacobson or Lee, to arrive at the process specified in each of these
appealed claims. See generally, In re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531
(Fed. Cir. 1988) (“The consistent criterion for determination of obviousness is whether the prior
art would have suggested to one of ordinary skill in the art that [the claimed process] should be
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.”).
We have carefully considered the arguments by the examiner and by appellants. 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 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 claims 3 and 7 specifies, inter alia, that the zirconium
halide vapor is mixed with a reaction gas of oxygen and hydrogen (see brief, page 9). Appellants
point out that Zirngibl does not teach or suggest a reactive gas that contains both oxygen and
hydrogen (brief, page 6). The examiner replies that this reference does teach “air (which contains
oxygen and hydrogen gases)” (answer, page 6). The difficulty that we have with the examiner’s
argument is that it is well known that air contains very little hydrogen.3 Appellants point out that
2 Answer, pages 3-5.
3 See, e.g., the definition of “air” in The Condensed Chemical Dictionary 25 (10th ed., Gessner
G. Hawley, ed., New York, Van Nostrand Reinhold Company, 1981), wherein “air” contains
“hydrogen” at about “0.000,05” % by volume.
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