Appeal No. 1996-3469
Application No. 08/268,708
limitation with regard to obviousness under 35 U.S.C. '
103. In fact, it must be considered.
Even though the above quoted expressions are
held by us to introduce new matter into the
claims, nevertheless, they cannot be ignored,
but rather, must be considered and given weight
when evaluating the claims so limited with
regard to obviousness over the art. See In re
Miller, 58 CCPA 1182, 441 F.2d 689, 169 USPQ 597
(1971) and In re Wilson, 57 CCPA 1029, 424 F.2d
1382, 165 USPQ 494 (CCPA 1970).
Ex parte Pearson, 230 USPQ 711, 712. See also Ex parte
Grasselli, 231 USPQ 393, 394.
Second, examiner uses the wrong standard for
determining obviousness. The standard is as follows:
Under ' 103, the scope and content of the prior
art are to be determined; differences between
the prior art and the claims at issue are to be
ascertained; and the level of ordinary skill in
the pertinent art resolved. Against this
background, the obviousness or non-obviousness
of the subject matter is determined.
Graham v. John Deere, 148 USPQ 459, 467 (US 1966).
Instead, examiner makes a number of unsupported
statements to the effect that claimed features are
"obvious" or contain "nothing . . . non-obvious." From
this follows the determination that it would have been
"obvious" to use them. This is an example:
Features variously recited in the different
claims are considered obvious features or
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