Appeal No. 1999-0125
Application 08/427,534
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).
The threshold issue in this appeal is whether, as a matter of fact, the disclosure in Vachon
that “[t]o obtain the grafted copolymers of this invention, conventional polymerization
techniques may be employed” (col. 6, lines 58-60), when considered in the context of the further
disclosure that the specified polymerization system is “free radical emulsion polymerization
conditions” (e.g., col. 1, lines 31-32), would have reasonably been understood by one of ordinary
skill in this art to teach or infer that polymerization systems other than free radical emulsion
polymerization can be used to prepare the copolyesters taught in the reference3 (answer, pages 7-
8; brief, pages 7-9). In this respect, we agree with appellant that, in the context of the reference
as a whole, “Vachon refers only to conventional emulsion polymerization techniques” (brief,
page 9). Indeed, the examiner offers only the statement that “[i]n short, this disclosure is
inconclusive” (answer, page 7).
In the absence of a teaching or inference in Vachon that polymerization systems other
than free radical emulsion polymerization can be used, the examiner must provide objective
evidence or scientific explanation establishing that the applied prior art taken as a whole and/or
3 It is well settled that a reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in this art would have reasonably been expected to draw
therefrom, see generally, In re Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed.
Cir. 1992); presuming skill on the part of this person. In re Sovish, 769 F.2d 738, 743, 226
USPQ 771, 774 (Fed. Cir. 1985). In considering the disclosure of a reference, the definition of a
term or the meaning of a phrase must be construed within the context of the reference as
interpreted by one of ordinary skill in this art.
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