Appeal No. 1999-1051 Page 8
Application No. 08/652,740
2
Morita and Lister and in self-evident advantages of separating by suitable protective
means components which would adversely affect the performance of one another, which is
3
within the skill that must be accorded one of ordinary skill in the art. In this regard, Morita
and Lister insulate components from one another by filling the casings in which they are
located with epoxy, which the artisan would have recognized was for the purpose of
protecting one from the influence of the other.
We conclude that the combined teachings of Kaduki, Phillips, Morita, Lister and
Wallace establish a prima facie case of obviousness with regard to the subject matter of
claim 14, and we will sustain the rejection of this claim. While we have carefully
considered the arguments raised by the appellant in rebuttal, we find them not to be
persuasive, noting that some of the arguments are directed to elements which are not
present in the claim, and that although none of the references explicitly mention EMI, Morita
and Lister utilize as their protective shells the same material as disclosed by the appellant,
and therefore it can be expected also to reduce EMI.
2We are bound to consider the disclosure of a reference 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 USPQ 507, 510 (CCPA 1966)
and In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
3In an obviousness assessment, skill is presumed on the part of the artisan, rather
than the lack thereof. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir.
1985).
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007