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Appeal No. 1998-1373
Application No. 08/377,473
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellants regarding the above-noted rejections, we make reference to the Answer (Paper
No. 17 ) for the examiner's complete reasoning in support of the rejections, and to the
Revised Brief (Paper No. 16 ) for the appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
The guidance provided by our reviewing court with regard to evaluating the issue of
the obviousness of the appealed claims in the light of the applied prior art is as follows: A
prima facie case of obviousness is established when the teachings of the prior art itself
would appear to have suggested the claimed subject matter to one of ordinary skill in the
art (see In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993)). This is
not to say, however, that the claimed invention must expressly be suggested in any one or
all of the references, rather, the test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art (see Cable Elec.
Prods. v. Genmark, Inc., 770 F.2d 1015, 1025, 226 USPQ 881, 886-87 (Fed. Cir.
1985)), considering that a conclusion of obviousness may be made from common
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