Appeal No. 2001-1973 Page 9
Application No. 08/734,184
. . . Further, additional elements such as iron chloride, silicate and
vitamin B12 are clearly suggested, if not taught, by Dunahay et al[.]
to be useful for culturing algae. Also a bioreactor fiber glass tank
as described by applicants having a circular diameter of 18 inches
and a height of five feet is conventional in the art[. A]lthough the
specifications of appellants’ tank are not precisely disclosed such
conventional tanks are well known and their use would have been
obvious to one of ordinary skill in the art in the absence of any
unexpected successful results.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness. Only if that burden is
met, does the burden of coming forward with evidence or argument shift to the
applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993). The prima facie case must account for all the limitations of the claims.
See General Foods Corp. v. Studiengesellschaft Kohle mbH, 972 F.2d 1272,
1275, 23 USPQ2d 1839, 1840 (Fed. Cir. 1992) (“[E]ach claim is an entity which
must be considered as a whole.”) (emphasis in original); In re Angstadt, 537 F.2d
498, 501, 190 USPQ 214, 217 (CCPA 1976) (“[W]e must give effect to all claim
limitations.”) (emphasis in original).
Even when all of the elements of a claimed invention are individually
taught in the prior art, there must be some reason, suggestion, or motivation that
would have led a person skilled in the art to combine those elements. See In re
Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000):
“[I]dentification in the prior art of each individual part claimed is insufficient to
defeat patentability of the whole claimed invention. Rather, to establish
obviousness based on a combination of the elements disclosed in the prior art,
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