Appeal No. 1998-2349
Application 08/586,874
TIMM, Administrative Patent Judge, dissenting-in-part.
I respectfully dissent-in-part from the majority's
disposition of this case. I do so because I believe the
examiner has not produced a sufficient amount of evidence to
establish a prima facie case of obviousness with respect to
the subject matter of any of the claims on appeal.
Accordingly, I would reverse all the rejections.
In order to establish a prima facie case of obviousness,
there must be a suggestion to do what the appellant has done
and that suggestion must come from the prior art and not from
the appellant’s own disclosure. “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
11
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007