Appeal No. 95-1827
Application 07/816,157
limitation. See Gechter v. Davidson, 116 F.3d 1454, 1457, 43
USPQ2d 1030, 1032 (Fed. Cir. 1997). Every limitation
positively recited in a claim must be given effect in order to
determine what subject matter that claim defines. In re
Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548 (CCPA 1970).
Appellant asserts that the electrically conductive medium
is positively recited as a necessary element of the sterilizer
(brief, page 12). Appellant further submits that the
electrically conductive medium must be present in the inner
cavity before the sterilizer is complete and operational
(brief, page 15). The examiner does not refute these
assertions (answer, page 5). The examiner relies upon the
asserted holdings of In re Rishoi and Ex parte Masham for the 4
determination that there is no patentable combination between
a device and the material upon which it works (Paper No. 13,
page 2).
There are no per se rules for obviousness. See In re
42 USPQ2d 1647, 1648 (Bd. Pat. App. & Int. 1987). See
also In re Otto, 312 F.2d 937, 939, 136 USPQ 458, 459 (CCPA
1963); In re Young, 75 F.2d 996, 998, 25 USPQ 69, 71 (CCPA
1935); and In re Hughes, 49 F.2d 478, 479, 9 USPQ 223, 224
(CCPA 1931).
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