Ex Parte 4944298 et al - Page 5

               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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