Appeal No. 96-0251
Application 07/874,697
experimentation, where the prior art gave only general
guidance as to the particular form of the claimed invention or
how to achieve it”. See id. As discussed above, Lucisano
provides more than general guidance as to the particular form
of the claimed invention but, rather, discloses maintaining
the reference electrode at high impedance and indicates that
adequate shielding of the electrodes is desirable. The
present case therefore does not fit into either of the groups
of cases discussed by the court in O’Farrell. Consequently,
we are not persuaded by appellants’ argument. Appellants also
rely upon In re Dow Chemical Co., 837 F.2d 469, 472, 5 USPQ2d
1529, 1531 (Fed. Cir. 1988) and In re Tomlinson, 363 F.2d 928,
933, 150 USPQ 623, 627 (CCPA 1966), but in those cases the
references did not provide the guidance toward the claimed
invention provided by Lucisano as discussed above.
For the above reasons, we conclude, based on the
preponderance of the evidence, that the invention recited in
appellants’ claims 10, 11/10, 12, 13, 14/10, 14/12 and 14/13
would have been obvious to one of ordinary skill in the art
within the meaning of 35 U.S.C. § 103 over Lucisano.
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