Appeal 2007-3787
Reexamination 90/006,642
Patent 4,944,298
1 Motivation to combine teachings need not be expressly stated in any
2 prior art reference. In re Kahn, 441 F.3d 977, 989, 78 USPQ2d 1329, 1338.
3 (Fed. Cir. 2006). There need only be an articulated reasoning with rational
4 underpinnings to support a motivation to combine teachings. In re Kahn,
5 441 F.3d at 988, 78 USPQ2d at 1336.
6 A combination of familiar elements according to known methods is
7 likely to be obvious when it does no more than yield predictable results.
8 KSR, 127 S. Ct. at 1739, 82 USPQ2d at 1395. If a technique has been used
9 to improve one device, and a person of ordinary skill in the art would
10 recognize that it would improve similar devices in the same way, using the
11 technique is obvious unless its actual application is beyond his or her skill.
12 KSR International Co., 127 S. Ct. at 1740, 82 USPQ2d at 1396.
13 To satisfy the written description requirement under 35 U.S.C. § 112,
14 first paragraph, the specification must convey with reasonable clarity to
15 those skilled in the art that as of the filing date of the application the inventor
16 was in possession of the claimed invention. Vas-Cath Inc. v. Mahurkar, 935
17 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed.Cir. 1991).
18 F. Analysis
19 In this case, as in any appeal from an Examiner’s rejection, the
20 patentee must demonstrate error in the rejections on appeal.
21 The Written Description Rejection
22 The Applicant has not shown error in this rejection because the
23 Applicant has not addressed the totality of the Examiner’s rationale
24 underlying the rejection.
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