Appeal No. 1997-1436 Page 6
Application No. 08/419,174
the skill of one of ordinary skill and would not have
required undue experimentation to achieve.
These same determinations are incorporated by the examiner in
the rejection of claim 14 (answer, p. 4).
The appellants argue (brief, pp. 6-9, and reply brief,
pp. 1-4) that the combination of Hall Vandis and Koguchi would
not produce the subject matter of claims 13 and 14. We agree
for the reasons set forth below.
On page 3 of the answer, the examiner set forth the
following factual inquiries from Graham v. John Deere Co.,
383 U.S. 1, 148 USPQ 459 (1966), that are to be applied for
establishing a background for determining obviousness under
35 U.S.C. § 103:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art
and the claims at issue.
3. Resolving the level of ordinary skill in the
pertinent art.
While the examiner did broadly determine the scope and content
of Hall Vandis and Koguchi, the examiner did not ascertain the
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007