Appeal No. 1996-3982
Application No. 08/315,005
Accordingly, from our perspective, the original disclosure would not have
reasonably conveyed to one of ordinary skill in the art that appellants had
“possession” of a process for the preparation of a liquid developer, “wherein there
is extracted from about 60 to about 78 weight percent of said liquid vehicle.”
Accordingly, we affirm the examiner’s decision rejecting all of the appealed claims
under 35 U.S.C. § 112, first paragraph.
The Rejections under Section 103
Under 35 U.S.C. § 103, the obviousness of an invention cannot be established by
combining the teachings of the prior art references absent some teaching, suggestion
or incentive supporting the combination. ACS Hospital Systems, Inc. v.
Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir.
1984). This does not mean that the cited prior art references must specifically
suggest making the combination. B.F. Goodrich Co. V. Aircraft Braking Systems
Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318 (Fed. Cir. 1996); In re
Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988). Rather,
the test for obviousness is what the combined teachings of the prior art references
would have fairly suggested to those of ordinary skill in the art. In re Young, 927
F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991); In re Keller, 642
F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In evaluating such prior art
references, it is proper to take into account not only their specific teachings but
also the inferences which one skilled in the art would reasonably be expected to draw
therefrom. In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
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