Appeal No. 2003-0739
Application No. 09/319,763
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
or knowledge generally available to one having ordinary skill in
the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hospital Systems, Inc. v.
Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the Examiner are an essential part
of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
With respect to the Examiner’s 35 U.S.C. § 103(a) rejection
of appealed independent claims 1 and 6, Appellants assert that
the Examiner has failed to establish a prima facie case of
obviousness since all of the claimed limitations are not taught
or suggested by the applied Canfield reference. In particular,
Appellants contend (Brief, pages 3 and 4) that the Examiner has
misinterpreted the disclosure of Canfield as providing a
description of the claimed selective inhibition of a
-4-
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007