Appeal No. 2001-1225 Page 3
Application No. 09/019,693
No. 13) for the examiner's complete reasoning in support of the rejections, and to the Brief
(Paper No. 9), the Supplemental Brief (Paper No. 12), the Response to Examiner’s
Answer (Paper No. 14), and the Supplemental Response (Paper No. 18) for the
appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
The claims have been rejected under 35 U.S.C. § 103, and the guidance provided
by our reviewing court for evaluating rejections under this section of the statute is as
follows:
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. , Inc. v. Genmark, Inc., 770 F.2d 1015, 1025, 226 USPQ
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