Appeal No. 2001-1668
Application 09/036,754
various teachings in order to form the claimed invention] must be explicit in, or may be fairly
inferred from, the references, is decided on the facts of each case, in light of the prior art and its
relationship to the applicant’s invention.”); In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981)(“The test for obviousness is not whether the features of a secondary reference may
be bodily incorporated into the structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the references. Rather, the test is what
the combined teachings of the references would have suggested to those of ordinary skill in the
art.”); see also In re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988)
(“The consistent criterion for determination of obviousness is whether the prior art would have
suggested to one of ordinary skill in the art that [the claimed process] should be carried out and
would have a reasonable likelihood of success viewed in light of the prior art. [Citations omitted]
Both the suggestion and the expectation of success must be founded in the prior art, not in the
applicant’s disclosure.”).
Accordingly, since a prima facie case of obviousness has been established by the
examiner over the combined teachings of Fleming and Bennett, we have again evaluated all of
the evidence of obviousness and nonobviousness based on the record as a whole, giving due
consideration to the weight of appellants’ arguments in the brief. See generally, In re Johnson,
747 F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984); In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
We have carefully considered all of appellants’ arguments. The threshold issue raised by
appellants is whether the references disclose processes that are reasonably similar to each other
and to the claimed process that they constitute analogous prior art and would have been
combined by one of ordinary skill in this art (brief, pages 8-9). It is well settled that the examiner
must point to some teaching, suggestion or motivation in the prior art to support the combination
of references. See In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433-34 (Fed. Cir. 2002);
Smith Industries medical Systems, Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1356, 51 USPQ2d
1415, 1420-21 (Fed. Cir. 1999); In re Mayne, 1043 F.3d 1339, 1342, 41 USPQ2d 1451, 1454
(Fed. Cir. 1997); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ
9292, 933 (Fed. Cir. 1984); see also Keller, supra. The issue with respect to whether Fleming
- 5 -
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007