Appeal No. 93-3623 Page 21
Application 07/629,690
11. Patentability cannot be predicated on unclaimed
features. In re Schreiber, 128 F.3d 1473, 1479, 44 USPQ2d 1429,
1433 (Fed. Cir. 1997).
D. Obviousness
12. After considering the combined teachings of the
admitted prior art, Urdea, and Hara, Winter, Hrdina, or Leaback,
we conclude that the subject matter of claims 1 and 4, repre-
senting Appellant's separately argued groups I and II, would have
been obvious to a person having ordinary skill in the art at the
time of Appellant's invention. Thus, we affirm the examiner's
sixth rejection covering claims 1-8 and 21-25.
13. In light of our conclusion regarding the sixth
rejection, we need not reach the first and second rejections
covering the same claims. We note, however, our reliance on the
admitted prior in reaching our conclusion.
14. We conclude that claims 9-15 would not have been
obvious based on Hood, Hara, Winter, and Leaback. Consequently,
we reverse the examiner's third and fourth rejections.
15. We conclude that claims 19 and 20 would not have been
obvious based on Hrdina, Winter and Hara. We, therefore, reverse
the examiner's fifth rejection.
Page: Previous 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 Next
Last modified: November 3, 2007