Appeal No. 2001-0278
Application 09/069,002
These arguments do not rebut the prima facie case of obviousness. Mittleider
contains an express teaching of rewelding of defects upon detection. The type of
detection is not what Mittleider is relied upon for in the rejection, and the Appellants’
argument in that regard misses the mark.
Furthermore, there is no per se rule regarding the maximum number of
references applied by an Examiner in making a rejection. The criterion is not the
number of references, but what they would have meant to a person of ordinary skill in
the field of the invention. See, e.g. In re Gorman, 933 F.2d 982, 987, 18 USPQ2d 1885,
1889 (Fed. Cir. 1991) (A large number of cited references [thirteen] does not negate
the obviousness of the combination when the prior art uses the various elements for the
same purposes as they are used by appellants, making the claimed invention as a
whole obvious in terms of 35 U.S.C. §103). Compare Hybritech, Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1383, 231 USPQ 81, 93 (Fed. Cir. 1986), cert. denied,
480 U.S. 947 (1987), the court held that a combination of about twenty references that
"skirt[ed] all around" the claimed invention did not show obviousness. See also In re
Miller, 159 F.2d 756, 758-58, 72 USPQ 512, 514-15 (CCPA 1947) (rejecting argument
that the need for eight references for rejection supported patentability) and Kansas
Jack, Inc. v. Kuhn, 719 F.2d 1144, 1149, 219 USPQ 857, 860 (Fed. Cir. 1983) (where
teachings relied upon to show obviousness were repeated in a number of references,
the conclusion of obviousness was strengthened). Finally, see also In re Troiel, 274
F.2d 944, 947, 124 USPQ 502, 504 (CCPA 1960) (rejecting Appellant's argument that
combining a large number of references to show obviousness was "farfetched and
illogical").
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