Appeal No. 97-0064
Application No. 08/286,785
specification without any suggestion in the prior art, and
therefore does not provide a proper basis for obviousness.
"There must be some reason, suggestion, or motivation found in
the prior art whereby a person of ordinary skill in the field of
the invention would make the combination. That knowledge can not
come from the applicant's invention itself." See In re Oetiker,
977 F.2d 1443, 1447, 24 USPQ2d 1443, 1446 (Fed. Cir. 1992).
The examiner further states (Answer, page 8) that "if one
has decided to go from visual verification to machine
verification, there is no desire to maintain the size of
Wittwer's label." We agree that labels that are to be read by
machine generally do not need to be visible to the human eye.
However, in the present case, the examiner has presented no
rationale for moving to machine verification. Further, as the
purpose of Wittwer is visual verification, changing the size and
switching to machine verification would be contrary to the
teachings of the primary reference. Accordingly, we cannot
sustain the obviousness rejection of claim 1 and its dependents,
claims 2 through 4. Further, since each of claims 5 and 11
includes the limitation of a micro barcode imprinted on a pill,
we must reverse the obviousness rejection of claims 5, 11, and
their dependents, claims 6 through 10 and 12 through 16.
7
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007