Appeal No. 1996-1801
Application 08/142,049
the prior art and its relationship to the applicant’s invention.”); In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981)(“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary reference; nor is it that the
claimed invention must be expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to those of ordinary skill in the
art.”).
We reach the same result with respect to the ground of rejection of appealed claim 14, which
rejection is principally founded on the same combination of references.
Accordingly, since the examiner has established a prima facie case of obviousness, we have
again evaluated all of the evidence of obviousness and nonobviousness based on the record as a whole,
giving due consideration to the weight of appellant’s arguments. See generally In re Johnson, 747
F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984).
We have carefully considered all of appellant’s arguments in the brief and agree with the
examiner’s response thereto set forth in the answer. As pointed out by the examiner, and as we have
set forth above, it is the combined teachings of the references, and not appellant’s disclosure, which
provides the objective evidence that one of ordinary skill in this art would have been motivated to
irradiate the final package containing the biological material with the reasonable expectation of obtaining
the desired level of sterilization. Gorman, supra; Keller, supra; compare generally, Fritch, 972
F.2d at 1265-66, 23 USPQ2d at 1783-84. We fail to find in the record any evidence that the claimed
method of sterilization provides a new or unexpected result.
Accordingly, based on our consideration of the totality of the record before us, we have weighed
the evidence of obviousness found in the combined teachings of Falciani, Anthony and Bacehowski, with
respect to appealed claims 1, 4, 5, 8, 9, 13, 16, 17 and 19, and the combined teachings of Falciani,
Anthony, Bacehowski, Pomerantz and Anderson, with respect to appealed claims 14 and 15, with
appellant’s countervailing evidence of and argument for nonobviousness and conclude that the claimed
invention encompassed by appealed claims 1,4, 5, 8, 9, 13 through 17 and 19 would have been obvious
- 5 -
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007