Appeal No. 2004-2035
Application 09/978,763
would have placed this person in possession of the claimed invention, taking into account this
person’s own knowledge of the particular art, is a question of fact. See generally, In re Graves,
69 F.3d 1147, 1152, 36 USPQ2d 1697, 1701 (Fed. Cir. 1995), and cases cited therein (a
reference anticipates the claimed method if the step that is not disclosed therein “is within the
knowledge of the skilled artisan.”); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA
1968) (“[I]n considering the disclosure of a reference, it is proper to take into account not only
specific teachings of the reference but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom.”).
Here, there is no showing by the examiner that one skilled in the art would have been
directed to appellants’ claimed invention encompassed by claim 75 by the teachings of Berg (see
Office action mailed April 16, 2003, page 2). See generally, In re Arkley, 455 F.2d 586, 587,
172 USPQ 524, 526 (CCPA 1972) (“[F]or the instant rejection under 35 U.S.C. 102(e) to have
been proper, the . . . reference must clearly and unequivocally disclose the claimed compound or
direct those skilled in the art to the compound without any need for picking, choosing, and
combining various disclosures not directly related to each other by the teachings of the cited
reference. Such picking and choosing may be entirely proper in the making of a 103,
obviousness rejection, where the applicant must be afforded an opportunity to rebut with
objective evidence any inference of obviousness which may arise from the similarity of the
subject matter which he claims to the prior art, but it has no place in the making of a 102,
anticipation rejection.”).
Accordingly, in the absence of a prima facie case of anticipation, we reverse the rejection
of claims 75, 76, 78, 80 through 82, 84 through 87 and 90 through 94 under 35 U.S.C. § 102(b).
However, the same facts in a reference that do not provide a description of a claimed
invention under § 102(b) may constitute “evidence of obviousness under § 103 for all it fairly
suggests to one of ordinary skill in the art.” In re Wiggins, 488 F.2d 538, 543, 179 USPQ 421,
425 (CCPA 1973); see also Arkley, 455 F.2d at 587, 172 USPQ at 526.
We have carefully reviewed the record on this appeal and based thereon find ourselves in
agreement with the examiner that the claimed patterned stent encompassed by appealed claim 75
would have been obvious over the teachings of Berg to one of ordinary skill in this art at the time
the claimed invention was made (see Office action mailed April 16, 2003, page 2).
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