Ex parte RAO et al. - Page 6




          Appeal No. 96-3374                                                          
          Application No. 08/115,974                                                  


                                The obviousness issue                                 
               The test for obviousness is what the combined teachings                
          of the references would have suggested to one of ordinary                   
          skill in the art.  See In re Young, 927 F.2d 588, 591, 18                   
          USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d               
          413, 425, 208 USPQ 871, 881 (CCPA 1981).  Moreover, in                      
          evaluating such references it is proper to take into account                
          not only the specific teachings of the references but also the              
          inferences which one skilled in the art would reasonably be                 
          expected to draw therefrom.  In re Preda, 401 F.2d 825, 826,                
          159 USPQ 342, 344 (CCPA 1968).                                              


               The appellants have provided three groups of claims as                 
          follows: Group I, claims 1 through 3 and 5 through 12; Group                
          II, claims 13 through 18; and Group III, claim 20.  See pages               
          5-7 of the appellants' brief.  In accordance with 37 CFR §                  
          1.192(c)(7), we have selected claims 1, 13 and 20 from the                  
          appellants' three groups of claims to decide the appeal on the              
          rejections under                                                            
          35 U.S.C. § 103.                                                            


                                          6                                           





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  15  Next 

Last modified: November 3, 2007