Appeal No. 2001-1939 Page 10
Application No. 09/072,605
0.06 and 0.0002 inches. The Klein range encompasses the claimed range, and thus
clearly “contains” particles that are within the claimed range, which is all that claim 18
requires. The Section 102 rejection of claim 18 also is sustained.
The Rejections Under Section 103
The initial burden of establishing a basis for denying patentability to a claimed
invention rests upon the examiner. See In re Piasecki. 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984). The question under 35 U.S.C. §103 is not merely
what the references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made. See Merck & Co. v. Biotech
Labs., Inc. 874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir.), cert. denied,
493 U.S. 975 (1989) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981). While there must be some suggestion or motivation for one of ordinary skill in
the art to combine the teachings of references, it is not necessary that such be found
within the four corners of the references themselves; a conclusion of obviousness may
be made from common knowledge and common sense of the person of ordinary skill in
the art without any specific hint or suggestion in a particular reference. See In re
Bozak, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969). Further, in 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).
Insofar as the references themselves are concerned, we are bound to consider the
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