Appeal No. 2001-2327 Page 7
Application No. 08/835,460
With regard to the difference, the examiner determined (answer, p. 4) that to make
the lower rubber ring and coil spring rubber ring of the admitted prior art integral is an
obvious matter of engineering choice and that it would have been obvious to one of
ordinary skill in the art at the time the invention was made to have provided the admitted
prior art with integral rubber sections as shown by Kanda to increase the durability of the
rubber sections and the support plates, and to protect the support plates.
The appellant argues throughout both briefs that there is no suggestion in the
applied prior art to have modified the admitted prior art to arrive at the claimed invention.
We agree.
A critical step in analyzing the patentability of claims pursuant to 35 U.S.C. § 103 is
casting the mind back to the time of invention, to consider the thinking of one of ordinary
skill in the art, guided only by the prior art references and the then-accepted wisdom in the
field. See In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999).
Close adherence to this methodology is especially important in cases where the very ease
with which the invention can be understood may prompt one "to fall victim to the insidious
effect of a hindsight syndrome wherein that which only the invention taught is used against
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007