Appeal No. 2004-2284
Application 09/832,873
7 (page 4). Riquet further teaches the disc pulper shown in Fig. 3 thereof that has “blades which
allow for better pulping of the paste” (page 5).
We thus find that, prima facie, the combined teachings of Egenes and Riquet provide
substantial evidence in support of the examiner’s position. Both the disc predisperser 1 of the
second embodiment of Egenes and the mallet roll of Riquet Fig. 1 are taught to be used to
process pulps containing recycled paper by mixing the paper pulp stock to disperse the
particulate material to form a dispersion or paste, to which bleach can be add. In this respect,
neither apparatus is disclosed to provide the grinding action to form smaller particles as
disclosed for the main disc disperser 8 of Egenes and the blade equipped disc pulper of Riquet
Fig. 3.
Therefore, prima facie, one of ordinary skill in this art would have reasonably
interchanged the disc predisperser 1 of the second embodiment of Egenes with the mallet roll of
Riquet Fig. 1, in the expectation of obtaining the same or similar result. Accordingly, one of
ordinary skill in this art routinely following the combined teachings of Egenes and Riquet would
have arrived at the claimed invention encompassed by claims 1, 6 and 13 without resort to
appellants’ specification. See 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.”); In re Keller, 642 F.2d 413, 425,
208 USPQ 871, 881-82 (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.”); In re Siebentritt, 372 F.2d 566, 567-68, 152 USPQ 618, 619
(CCPA 1967) (express suggestion to interchange methods which achieve the same or similar
results is not necessary to establish obviousness); see also In re O’Farrell, 853 F.2d 894, 903-04,
7 USPQ2d 1673, 1680-81 (Fed. Cir. 1988) (“Obviousness does not require absolute
predictability of success. . . . There is always at least a possibility of unexpected results, that
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