Appeal No. 1999-1047 Page 4
Application No. 08/238,598
Both of the standing rejections are under 35 U.S.C. § 103. 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. v. Genmark, 770 F.2d 1015, 1025, 226 USPQ 881, 886-87 (Fed. Cir.
1985)), considering that a conclusion of obviousness may be made from common
knowledge and common sense of the person of ordinary skill in the art without any specific
hint or suggestion in a particular reference (see In re Bozek, 416 F.2d 1385, 1390, 163
USPQ 545, 549 (CCPA 1969)), with skill being presumed on the part of the artisan, rather
than the lack thereof (see In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir.
1985)). Insofar as the references themselves are concerned, we are bound to consider the
disclosure of each for what it fairly teaches one of ordinary skill in the art, including not only
the specific teachings, but also the inferences which one of ordinary skill in the art would
reasonably have been expected to draw therefrom (see In re Boe, 355 F.2d 961, 965, 148
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007