Appeal 2007-0266
Application 09/929,227
1 fact.” Id. (citing In re Dembiczak, 175 F.3d 994, 998, 50 USPQ2d 1614, 1616
2 (Fed. Cir. 1999)).
3 “In assessing whether subject matter would have been non-obvious under §
4 103, the Board follows the guidance of the Supreme Court in Graham v. John
5 Deere Co. [383 U.S. at 17, 148 USPQ at 467.] The Board determines ‘the scope
6 and content of the prior art,’ ascertains ‘the differences between the prior art and
7 the claims at issue,’ and resolves ‘the level of ordinary skill in the pertinent art.’”
8 Id. (citing Dann v. Johnston, 425 U.S. 219, 226, 189 USPQ 257, 261 (1976))
9 (quoting Graham, 383 U.S. at 17, 148 USPQ at 467). “Against this background,
10 the Board determines whether the subject matter would have been obvious to a
11 person of ordinary skill in the art at the time of the asserted invention.” Id. (citing
12 Graham, 383 U.S. at 17, 148 USPQ 467).
13 ANALYSIS
14 As an initial matter, we note that Appellants’ arguments are based to a large
15 extent on the Declaration from Dr. Turcic. We have reviewed the Declaration and
16 find it to be legally insufficient for two reasons. As noted above in our
17 “PRINCIPLES OF LAW” section, enablement requires that the prior art reference
18 must teach one of ordinary skill in the art to make or carry out the claimed
19 invention without undue experimentation. The Declaration by Dr. Turcic does not
20 even mention undue experimentation, nor does it discuss the so-called Wands
21 factors. As such, the Declaration is legally insufficient to support an argument that
22 the Friemann reference lacks enabling disclosure.
23 Secondly, as our case law quotation makes clear, the issue to be established
24 is whether the reference is enabled to one of ordinary skill without undue
25 experimentation. However, as shown in paragraph 8 and paragraph 26 of the
26 Declaration, the evidence by Dr. Turcic is based on his own personal knowledge
6
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