Appeal No. 1997-3734 Page 3
Application No. 08/329,806
Claims 1 and 2 stand rejected under 35 U.S.C. § 103 as being unpatentable over Tadaki, Fujita,
Kobayashi, Shioya and Wolf taken together. Claims 3-7 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Tadaki, Fujita, Kobayashi, Shioya and Wolf taken together and
further in view of Sun, Chung, Dixit, and Kobayashi. Claims 8 and 9 stand rejected under
35 U.S.C. § 103 as being unpatentable over Tadaki, Fujita, Kobayashi, Shioya and Wolf taken
together and further in view of Dixit, Manocha, and Tadaki. We reverse substantially for the reasons
presented in the Brief and add the following primarily for emphasis.
OPINION
“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
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