Appeal No. 2000-2061 Page 3
Application No. 08/463,843
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. 41) for the examiner's complete reasoning in support of the rejections, and to the Brief
(Paper No. 36) and Supplemental Brief (Paper No. 40) for the appellants’ arguments
thereagainst.3
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. The guidance provided by our
reviewing court for evaluating rejections under Section 103 is as follows: The test for
obviousness is what the combined teachings of the prior art would have suggested to one
of ordinary skill in the art. See, for example, In re Keller, 642 F.2d 413, 425,
208 USPQ 871, 881 (CCPA 1981). In establishing a prima facie case of obviousness, it
is incumbent upon the examiner to provide a reason why one of ordinary skill in the art
3We wish to point out that a provisional rejection of claims 34, 39-42, 46, 47 and 49
under the judicially created doctrine of double patenting, which appeared in the final
rejection (Paper No. 38), was not repeated in the Answer (Paper No. 41), presumably
because the appellants agreed to file a terminal disclaimer if and when a patent issued on
the claims of copending application number 08/332,275 (upon which the rejection was
based (Paper No. 40)).
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