Appeal No. 2000-0655 Page 8
Application No. 08/522,017
member, which would have been recognized by the artisan.2 While this is not the same
reasoning as is advanced by the appellant for the claimed construction, it nevertheless
results in the claimed subject matter and constitutes a proper suggestion to combine the
references.3
It therefore is our conclusion that the combined teachings of Rea and Berry
establish a prima facie case of obviousness with regard to the subject matter recited in
claim 11. This being the case, we will sustain this rejection of claim 11. In addition, since
the appellants have chosen not to challenge with any reasonable specificity before this
Board the rejection of the subject matter presented in dependent claims 13-15, they are
grouped with independent claim 11, and fall therewith. See In re Nielson, 816 F.2d 1567,
1572, 2 USPQ 2d 1525, 1528 (Fed. Cir. 1987).
While we have carefully considered the arguments presented by the appellants, they
have not persuaded us that the rejection on the basis of Rea and Berry should not be
2In an obviousness assessment, skill is presumed on the part of the artisan, rather
than the lack thereof. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir.
1985).
3The prior art teachings relied upon need not disclose the same advantage that the
appellant alleges, for all that is required is that there is a reasonable suggestion to
combine the references. See In re Kronig, 539 F.2d 1300,1304, 190 USPQ 425, 427-428
(CCPA 1976); and Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Int. 1985), aff’d.
mem., 759 F.2d 1017 (Fed. Cir. 1986).
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