Appeal No. 1999-0218
Application 08/691,889
Such a suggestion may come expressly
from the references themselves. See, e.g.,
In re Sernaker, 702 F.2d 989, 994, 217 USPQ
1, 5 (Fed. Cir. 1983). It may come from
knowledge of those skilled in the art that
certain references, or disclosures in the
references, are known to be of special
interest or importance in the particular
field. Cf. Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281,
297 n.24, 227 USPQ 657, 667 n.24 (Fed. Cir.
1985) (stating that the knowledge of one
skilled in the art may provide the
"teaching, suggestion, or inference" to
combine references), cert. denied, 475 U.S.
1017 (1986). It may also come from the
nature of a problem to be solved, leading
inventors to look to references relating to
possible solutions to that problem. See,
e.g., Application of Rinehart, 531 F.2d
1048, 1054, 189 USPQ 143, 149 (CCPA 1976)
(considering the problem to be solved in a
determination of obviousness).
G. Appellant's options regarding the new ground of rejection
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b) (amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR
§ 1.196(b) provides, "[a] new ground of rejection shall not be
considered final for purposes of judicial review."
13
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007