Appeal No. 1998-0180
Application No. 08/471,309
totality of the record, by a preponderance of evidence with due consideration to persuasiveness of
argument. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
The examiner submits a rejection of Claim 1 under 35 U.S.C. § 103 as being unpatentable over
Liu on pages 4 and 5 of the Final Rejection. The rejection for obviousness, as opposed to the rejection
for anticipation over the same reference, may be based on an alternative view that the “dispersion”
being “approximately the same” is not inherent in Liu, but is absent from the reference. “Since
dispersion is a recognized phenomenon, and the frequencies in the sum and difference patterns...are
identical, it would therefore have been obvious to a skilled artisan to design the inner and outer
waveguides to have approximately the same dispersion.” (Final Rejection, page 5.)
The rejection is facially inconsistent. Although the examiner states, within the Section 103
rejection, that the dispersion relationship is "inherent," the rejection appears to treat the dispersion
relationship as the thing in the claims that is not disclosed by the reference. Inherency and obviousness
are distinct concepts. W. L. Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 1555, 220 USPQ
303, 314 (Fed. Cir. 1983).
[The] modest flexibility in the rule that "anticipation" requires that every element of the
claims appear in a single reference accommodates situations where the common
knowledge of technologists is not recorded in the reference; that is, where technological
facts are known to those in the field of the invention, albeit not known to judges. It is
not, however, a substitute for determination of patentability in terms of § 103.
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1269, 20 USPQ2d 1746, 1749-50 (Fed. Cir.
1991).
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