Appeal No. 2000-1491 Page 8
Application No. 09/067,811
The 35 U.S.C. § 103 Rejection
We will not sustain the rejection of claims 1 to 7 under
35 U.S.C. § 103.
In the answer, the examiner rejected claims 1 to 7 under
35 U.S.C. § 103 as being unpatentable over Bannai or Sugiyama
or Kasahara. The full explanation of the rejection (answer,
p. 4) is that
Applicants have disclosed plural equivalent
embodiments (Figures 2, 4, 6, 8, 9, 10, 11, 12 and 14).
Since the teachings in the three prior art devices are
functional equivalents to the disclosed and claimed
electrostatic charge attracting systems, the claims are
obvious over those teachings.
The Supreme Court observed in Graham v. John Deere Co.,
383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966):
While the ultimate question of patent validity is
one of law, . . . the § 103 condition [that is,
nonobviousness] . . . lends itself to several basic
factual inquiries. Under § 103, the scope and
content of the prior art are to be determined;
differences between the prior art and the claims at
issue are to be ascertained; and the level of
ordinary skill in the pertinent art resolved.
Against this background, the obviousness or
nonobviousness of the subject matter is determined.
Such secondary considerations as commercial success,
long felt but unresolved needs, failure of others,
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