Appeal No. 1998-1408 Page 8
Application No. 08/569,529
of persons skilled in the art to complement that [which is]
disclosed ....’” In re Bode, 550 F.2d 656, 660, 193 USPQ 12,
16 (CCPA 1977) (quoting In re Wiggins, 488 F.2d 538, 543, 179
USPQ 421, 424 (CCPA 1973)). Those persons “must be presumed
to know something” about the art “apart from what the
references disclose.” In re Jacoby, 309 F.2d 513, 516, 135
USPQ 317, 319 (CCPA 1962). We next address the obviousness of
the following groups of claims:
• claims 1 and 5-7
• claims 2-4
• claims 15-18.
Claims 1 and 5-7
The appellants make three arguments. First, the
appellants argue, “The Examiner asserts that claim 1 of the
present invention would have been obvious in view of Sato,
Dirks and Layton et al. but this is Monday morning
quarterbacking.” (Appeal Br. at 5.)
The appellants misconstrue the criteria for combining
references. “‘[T]he question is whether there is something in
the prior art as a whole to suggest the desirability, and thus
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