Ex parte SHWARTS et al. - Page 5




          Appeal No. 97-1223                                         Page 5           
          Application No. 08/147,143                                                  


          not have suggested to one of ordinary skill in the art the                  
          invention of claims 1-18, 32-34, and 39-40 but would have                   
          suggested the invention of claims 31 and 35-38.  Accordingly,               
          we affirm-in-part.                                                          


               We begin our consideration of the obviousness of the                   
          claims  by finding the references to represent the level of                 
          ordinary skill in the art.  See In re GPAC Inc., 57 F.3d 1573,              
          1579, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995) (finding the Board              
          did not err in concluding the level of ordinary skill in the                
          art was best determined by the references of record); In re                 
          Oelrich, 579 F.2d 86, 91, 198 USPQ 210, 214 (CCPA 1978)                     
          ("[T]he PTO usually must evaluate  ... the level of ordinary                
          skill solely on the cold words of the literature.").  Of                    
          course, every patent application and reference relies to some               
          extent upon knowledge of persons skilled in the art to                      
          complement that which is disclosed therein.  In re Bode, 550                
          F.2d 656, 660, 193 USPQ 12, 16 (CCPA 1977).  Persons skilled                
          in the art must be presumed to know something about the art                 
          apart from what the references disclose.  In re Jacoby, 309                 
          F.2d 513, 516, 135 USPQ 317, 319 (CCPA 1962).                               







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