Appeal No. 2001-0777
Application No. 09/652,893 Page 6
1531 (Fed. Cir. 1988). "Both the suggestion and the expectation
of success must be founded in the prior art, not in the
applicant's disclosure." Id.
Thus, a prima facie case of obviousness is established by
showing that some objective teaching or suggestion 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, including each and every limitation of the
claims, without recourse to the teachings in appellants’
disclosure. See generally In re Oetiker, 977 F.2d 1443, 1447-48,
24 USPQ2d 1443, 1446-47 (Fed. Cir. 1992) (Nies, J., concurring).
This showing can be established on similarity of product or of
process between the claimed invention and the prior art. Here,
the examiner has presented insufficient evidence or scientific
reasons so as to establish that one of ordinary skill in this art
would have been led to employ the large electron beam source of
Livesay in performing the annealing step(s) of Japanese patent
abstract of 58-151517 and Yoshii so as to solve the problems
desired to be addressed by Yoshii in the annealing step based on
any of the applied teachings of Livesay concerning the
application of a wide electron beam in other processes, as
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007