Appeal No. 2001-0452
Application 08/073,969
stated in American Hospital Supply Corp. v. Travenol Labs., Inc., 745 F.2d 1, 7,
223 USPQ 577, 582 (Fed. Cir. 1984), “’obvious to try’ is not a legitimate test of
patentability under section 103” [footnote omitted].
Further, in resolving questions of obviousness, it is imperative that the examiner
consider applicants’ claimed subject matter as a whole. 35 U.S.C. § 103. As stated in In
re Geerdes, 491 F.2d 1260, 1262, 180 USPQ 789, 791 (CCPA 1974), every limitation in
the claims must be given effect. This the examiner has not done. On the contrary, the
examiner fixates on a previous Board opinion in this application (Paper No. 33, mailed
March 31, 1998). In the previous opinion, another merits panel of the Board found that
Segall constitutes a technical anticipation of the sole independent claim then pending
(claim 37). For that reason, and because lack of novelty in the claimed subject matter is
the ultimate or epitome of obviousness, the previous merits panel affirmed the examiner’s
decision rejecting claim 37 under 35 U.S.C. § 103 as unpatentable over Segall.
Dependent claims 2 through 7, 13 through 15, and 17 through 22 fell together with
independent claim 37 in the previous decision, because the former were not argued
separately from the latter.
In the present appeal, the examiner steadfastly relies on reasoning set forth by the
previous merits panel. See the Examiner’s Answer mailed May 17, 2000, page 7, first full
paragraph (“The instant claims . . . are not rejected for a different reason than found in the
Board of Appeals’ decision in Paper No. 33, but for the same reason”); and page 9, first
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