Appeal No. 1997-4046 Page 7
Application No. 08/040,117
The method of pumping recited in independent claim 31
differs from that of claim 30 essentially only in that claim 31
specifies that the pump be inserted into liquid at least 26
feet below the surface. This limitation is not taught by
Niehaus, and therefore the anticipation rejection of claim 31
and dependent claim 32 cannot be sustained.
The Rejections Under 35 U.S.C. § 103
The initial burden of establishing a basis for denying
patentability to a claimed invention rests upon the examiner.
See In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-
88 (Fed. Cir. 1984). The question under 35 U.S.C. § 103 is not
merely what the references expressly teach but what they would
have suggested to one of ordinary skill in the art at the time
the invention was made. See Merck & Co. v. Biocraft Labs.,
Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1847 (Fed. Cir.),
cert. denied, 493 U.S. 975 (1989) and In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981). While there must be
some suggestion or motivation for one of ordinary skill in the
art to combine the teachings of references, it is not necessary
that such be found within the four corners of the references
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007