Appeal No. 1997-3335 Page 4
Application No. 08/315,454
OPINION
We have reviewed the respective positions presented by Appellants and the Examiner. In so
doing, we find ourselves in agreement with Appellants that the applied prior art fails to establish a
prima facie case of obviousness of the claimed subject matter. Accordingly, we reverse the
Examiner's rejection for essentially those reasons advanced by Appellants, and we add the following
primarily for emphasis.
“A critical step in analyzing the patentability of claims pursuant to section 103(a) is casting the
mind back to the time of invention, to consider the thinking of one of ordinary skill in the art, guided
only by the prior art references and the then-accepted wisdom in the field.” In re Kotzab, 217 F.3d
1365, 1369-70, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000). “The invention must be viewed not
with the blueprint drawn by the inventor, but in the state of the art that existed at the time.” In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)(quoting Interconnect
Planning Corp. v. Feil, 774 F.2d 1132, 1138, 227 USPQ 543, 547 (Fed. Cir. 1985). To establish a
prima facie case of obviousness, “there must be some teaching, suggestion or motivation in the prior
art to make the specific combination that was made by the applicant.” In re Dance, 160 F.3d 1339,
1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998). “In other words, the examiner must show reasons
that the skilled artisan, confronted with the same problems as the inventor and with no knowledge of the
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007