Appeal 2007-0768 Page 11
Application 10/430,883
1 3. “What the prior art teaches, whether it teaches away from the claimed
2 invention, and whether it motivates a combination of teachings from
3 different references are questions of fact.” In re Fulton, 391 F.3d 1195,
4 1199-1200, 73 USPQ2d 1141, 1144 (Fed. Cir. 2004).
5
6 4. “[I]t is well settled that it is not “invention” to broadly provide a
7 mechanical or automatic means to replace manual activity which has
8 accomplished the same result. In re Rundell, 18 CCPA 1290, 48 F.2d 958, 9
9 USPQ 220[, 221] [“Appellant argues that his rejected claims rest upon an
10 automatic mechanism. The mere statement that a device is to be operated
11 automatically instead of by hand, without a claim specifying any particular
12 automatic mechanism, is not the statement of an invention. Marchand v.
13 Emken, 132 U. S. 195; In re Gill, 17 C. C. P. A. (Patents) 700, 36 F. (2d)
14 128.”]” In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958).
15
16
17 ANALYSIS
18 The rejection of claims 1, 4-7, 15-19 under 35 U.S.C. § 103(a) over the
18 Northern District of Texas Jury Plan in view of The Jury Research Institute.
19
20
21 The Examiner has presented evidence and a reasoned analysis in
22 support of her contention that one of ordinary skill in the art would have
23 been led to combine the relevant teachings of the references to arrive at the
24 claimed invention and thus established a prima facie case of obviousness of
25 the claimed invention over that of the combined prior art. FF 4-10. The
26 burden now shifts to Appellant to come forward with evidence or argument
27 showing error in the Examiner’s determination.
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: September 9, 2013