Appeal No. 1996-3469
Application No. 08/268,708
control limitations well within the
determination of one with the ordinary skill in
the art. Therefore, it would have been obvious
to use such known features in the composition
and process of the combined reference.
The relevant inquiring is whether the claimed subject
matter would have been obvious over the prior art to one
with ordinary skill. For a large number of claimed
features, no prior art is relied upon.
Third, "[i]t is elementary that the claimed
invention must be considered as a whole in deciding the
question of obviousness," In re De Blauwe, 736 F.2d 699,
706, 222 USPQ 191, 196 (Fed. Cir. 1984). Examiner's
position never comes to grip with the invention as a
whole. It is presented as though every feature of the
claim is independent from each other. According to the
examiner, all the claimed features are known or obvious
for one reason or another. But the
question is not whether any single feature is obvious
over the prior art but whether it, in combination with
all the other features claimed, is obvious over the prior
art to one of ordinary skill.
Lastly, examiner states that AAppellants argue that
they have shown commercial success.@ In fact, they filed
a declaration (paper no. 8, filed May 19, 1995).
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