Appeal No. 2001-0557 Page 3
Application 09/376,548
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. 9) for the examiner's complete reasoning in support of the rejections, and to the Brief
(Paper No. 8) and Reply Brief (Paper No. 10) for the appellants’ arguments thereagainst.
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 standing rejections are under 35 U.S.C. § 103(a). 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, 782, 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, 770 F.2d 1015, 1025, 226 USPQ 881, 886 (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
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007