Appeal No. 1999-0865
Application No. 08/468,573
held that, in assessing patentability of a claimed invention, all
the claim limitations must be suggested or taught by the prior
art. In re Royka, 490 F.2d 981, 983-84, 180 USPQ 580, 582 (CCPA
1974). All words in a claim must be considered in judging the
patentability of that claim against the prior art. In re Wilson,
424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).
Accordingly, since all of the limitations of claim 59 have
not been shown to be expressly disclosed or inherent in the
Fessenden reference, the Examiner’s 35 U.S.C. § 102(b) rejection
of dependent claim 59 is not sustained.
We next consider the Examiner’s obviousness rejection of
claims 61-68 and note that in rejecting claims under 35 U.S.C.
§ 103, it is incumbent upon the Examiner to establish a factual
basis to support the legal conclusion of obviousness. See In re
Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
In so doing, the Examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion, or implication in the prior art as a whole
9
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007