Appeal No. 2002-0672
Application No. 09/158,715
that the catalyst block is curvilinear to match the curvature of
a curved catalyst chamber. The examiner has not pointed out
where Lesieur discloses the curvilinear feature required by the
appellant’s claim 12.
Rejection under 35 U.S.C. § 103
The examiner’s argument regarding claim 11 is that
“providing [a] different shape for the catalyst block, such as a
curvilinear structure of the catalyst block, is within the
purview of one having ordinary skill in the art during routine
experimentation and optimization of the system, absence [sic,
absent] showing any unexpected result thereof” (answer, page 4).
One reason why the examiner’ argument is not persuasive is
that the examiner has not established that Lesieur would have
fairly suggested, to one of ordinary skill in the art, a catalyst
block as that term is used by the appellant.
Also, for a prima facie case of obviousness to be
established, the teachings from the prior art itself must appear
to have suggested the claimed subject matter to one of ordinary
skill in the art. See In re Rinehart, 531 F.2d 1048, 1051, 189
USPQ 143, 147 (CCPA 1976). The mere fact that the prior art
could be modified as proposed by the examiner is not sufficient
to establish a prima facie case of obviousness. See In re
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