Appeal No. 1999-0801
Application 08/552,245
admitted prior art in appellants’ specification, as previously applied, further in view of Maissel et al..2
For the reasons pointed out by appellants in the brief, the examiner has failed to make out a prima facie
case with respect to both grounds of rejection.
It is well settled that “[t]he 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 the 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 Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531
(Fed. Cir. 1988). Thus, a prima facie case of obviousness is established by showing that some
objective teaching, suggestion or motivation in the applied prior art taken as a whole and/or knowledge
generally available to one of ordinary skill in the art would have led that person to the claimed invention
as a whole, including each and every limitation of the claims, without recourse to the teachings in
appellant’s disclosure. See generally, In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458
(Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573, 37
USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re Oetiker, 977 F.2d 1443, 1447-48, 24 USPQ2d
1443, 1446-47 (Fed. Cir. 1992) (Nies, J., concurring); In re Laskowski, 871 F.2d 115, 10 USPQ2d
1397 (Fed. Cir. 1989); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed.
Cir. 1988); Dow Chem., 837 F.2d at 473, 5 USPQ2d at 1531-32.
In order to consider the examiner’s application of the prior art of record to appealed claims 6
and 7, which are representative of the appealed claims and separately argued by appellants (brief, page
3), we must first interpret the same in light of the written description in appellant’s specification as it
would be interpreted by one of ordinary skill in this art, see generally, In re Morris, 127 F.3d 1048,
1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989), mindful that the terms in the appealed claims must be given
their ordinary meaning unless we find that another meaning is intended by appellants. See, e.g., York
Prods., Inc. v. Central Tractor Farm & Family Ctr.,
2 Answer, pages 3-5.
- 2 -
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007