Appeal No. 2001-0476
Application No. 08/768,231
When patentability turns on the question of
obviousness, the search for and analysis of the prior
art includes evidence relevant to the finding of
whether there is a teaching, motivation, or suggestion
to select and combine the references relied on as
evidence of obviousness. See, e.g., McGinley v.
Franklin Sports, Inc., 262 F.3d 1339, 1351-52, 60
USPQ2d 1001, 1008 (Fed. Cir. 2001) (“the central
question is whether there is reason to combine [the]
references," a question of fact drawing on the Graham
factors). (Emphasis added).
Once the scope of the claim is determined, the Examiner then
needs to make a finding in the prior art for each limitation in
the claim. Then the Examiner needs to apply the art by showing a
one-to-one correspondence of what the art teaches to what the
Appellant claims. By appreciating what each reference teaches as
a whole, the Examiner can then apply the appropriate art to the
claim limitations. This methodology was not performed by the
Examiner.
In a first instance, it is unclear as to how the Examiner
could apply the references in the 35 U.S.C. § 103 rejection
without knowing the scope of the claims. More specifically, the
Examiner failed to determine the scope and definitions for the
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