Appeal No. 2000-2045 Page 3
Application No. 09/206,253
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.
All of the rejections are under 35 U.S.C. § 103. 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, for example, 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 knowledge and common sense of
the person of ordinary skill in the art without any specific hint or suggestion in a particular
reference (see In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969)).
Insofar as the references themselves are concerned, we are bound to consider the
disclosure of each for what it fairly teaches one of ordinary skill in the art, including not only
the specific teachings, but also the inferences which one of ordinary skill in the art would
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