Appeal No. 2001-1679 Page 5
Application No. 08/849,336
result in that uniformity and definitiveness which Congress called for in the
1952 Act. [383 U.S. at 17-18, 148 USPQ at 467}
Office policy is to follow Graham v. John Deere Co. in the consideration
and determination of obviousness under 35 U.S.C. 103. As quoted above, the
four factual inquires enunciated therein as a background for determining
obviousness are as follows:
(A) Determining the scope and contents of the prior art;
(B) Ascertaining the differences between the prior art and the claims in
issue;
(C) Resolving the level of ordinary skill in the pertinent art; and
(D) Evaluating evidence of secondary considerations.
In the rejections (answer, p. 3) before us in this appeal, the above noted
methodology was not correctly followed by the examiner. First, in the rejection of claim
6 (the only independent claim on appeal) the examiner did not determine the scope and
content of the applied prior art (i.e., Lister, Kümmerlin, Krämer and Layher). Instead of
specifically pointing out what each reference taught vis-a-vis the subject matter of claim
6, the examiner just broadly provided that Lister and Kümmerlin both show a stepping
platform and that Krämer and Layher show platforms having plate members terminating
in rolled over pipes as a reinforcing means. Second, the examiner did not correctly
ascertain the differences between the applied prior art (i.e., Lister or Kümmerlin) and
the claims in issue. In that regard, the examiner ascertained that Lister and Kümmerlin
"both show the claimed stepping platform with the exception of the rollers over [sic,
front and rear rims rolled over to form a] cylindrical pipe." This ascertainment of the
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