Appeal 2007-1050
Application 10/058,360
than teaching away or otherwise discouraging an artisan from following the
path set out in a reference or led in a direction divergent from the path taken
by an applicant, the actual teachings in Dazey overcome the same known
disadvantages common to Appellants’ recognition of the disadvantages of
the prior art at Specification page 2 as well as those common disadvantages
outlined by Dazey at column 1.
When the above noted teachings of all three references relied upon by
the Examiner are respectively considered within the two stated rejections,
the conclusion is inescapable to us that the Examiner has not improperly
picked and chosen certain elements of the prior art for certain features of the
claimed invention as alleged at pages 15 and 16 of the principal Brief on
appeal and again at page 2 of the Reply Brief. Likewise, Appellants’ urging
at pages 18 through 20 of the principal Brief on appeal and at pages 4 and 5
of the reply Brief that there is no motivation to have combined the respective
teachings is clearly misplaced. On the contrary, there appears to us that
substantial evidence of unpatentability has been presented by the Examiner
of the subject matter in the claims on appeal. The desirability of the
combination is clearly made available to the artisan according to the
teachings and showings of the applied prior art as well as the Examiner’s
reasoning. Therefore, since the Examiner has clearly used teachings and
showings of the prior art, no valid argument of the Examiner exercising
prohibited hindsight reasoning is seen.
In view of the foregoing, the decision of the Examiner rejecting all
claims on appeal under 35 U.S.C § 103 is affirmed.
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