Appeal No. 95-3598
Application 08/125,671
We next look to the examiner's prior art rejection
of appealed claims 1, 11 through 13 and 18 through 20 under
35 U.S.C. § 103 as being unpatentable over the Fisher
publication. In this regard, the examiner has taken the position
that given the general knowledge and recognition of the sizing of
tools and instrumentation for laparoscopic procedures, one of
ordinary skill in the art would "recognize the potential of the
robotic tools and instrumentation of the Fisher teaching for
laparoscopic use, particularly in a conceptual sense . . ."
(answer, page 9) thereby rendering appellants' claimed invention
obvious. We do not agree.
The law followed by our court of review, and thus by
this Board, is that "[a] prima facie case of obviousness is
established when the teachings from the prior art itself would
appear to have suggested the claimed subject matter to a person
of ordinary skill in the art." In re Rinehart, 531 F.2d 1048,
1051, 189 USPQ 143, 147 (CCPA 1976). See also In re Lalu,
747 F.2d 703, 705, 223 USPQ 1257, 1258 (Fed. Cir. 1984) ("In
determining whether a case of prima facie obviousness exists, it
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