Appeal No. 1998-1584
Application 08/711,631
prima facie case of obviousness with respect to both grounds of rejection.
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 Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed.
Cir. 1991); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In
re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988).
It is readily apparent that the plain language of appealed claims 1 and 7, 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), simply
requires that the praseodymium oxide must be “loaded onto” the “surface” of either a cerium oxide or a
cerium-zirconium oxide “support material” in forming the claimed mixed oxide. This is set forth as a
specific step in the method of claim 7. In claim 1, this product-by-process limitation characterizes the
product as one in which the praseodymium oxide is deposited onto the surface of the previously formed
specified “support material” and thus is included only on that surface. See, e.g., In re Thorpe, 777
F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). We note here that while we agree with
appellants’ argument that hafnium oxide is an “indispensable” component of the composite oxide of Yao
(brief, pages 6-7), we are of the opinion that appellants have not convincingly established that this oxide
would be excluded from claims 1 and 7 through the use of the transitional phrase “consisting essentially
of” as this term would be interpreted in light of their specification. Indeed, we find no disclosure in
appellants’ specification which establishes that hafnium oxide would materially affect the basic and novel
characteristics of the claimed mixed oxides. See Morris, 127 F.3d at 1055-56, 44 USPQ2d at 1029;
see also PPG Industries Inc. v. Guardian Indus. Corp., 156 F.3d 1351, 1354-57, 48 USPQ2d
2 Answer, pages 4-7.
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