Appeal No. 2001-0774
Application 09/087,521
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 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 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.”); see also In re Keller,
642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981)(“The test for obviousness is not whether
the features of a secondary reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.”).
All of the grounds of rejection of appealed claims 1, 2 and 16 involve English and
Heckman. The examiner relies on the acknowledged prior art in English (col. 1, lines 19-33) for
a description of a “conventional [electrostatic fluidized bed powder coating] apparatus” (answer,
e.g., page 4). In the language of the appealed claims, we find that English discloses at best only a
“vacuum pump having a . . . powder inlet communicating with the powder coating area” of the
“powder coating structure.” On this record, we find that one of ordinary skill in this art could not
have reasonably inferred any additional apparatus elements of such a “conventional apparatus”
from this limited disclosure in English, including the nature of the “vacuum pump” and the
apparatus elements associated therewith.3,4 We note here that contrary to appellants’ arguments,
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 In re Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir.
1992); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on
the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
4 Cf. the acknowledged “typical” prior art electrostatic fluidized bed powder coating apparatus at
page 3, lines 6-21, of the specification which is described, in the language of the appealed claims,
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