Appeal No. 2002-0049 Page 14
Application No. 09/317,538
established by attacking the references individually when the rejection is predicated
upon a combination of prior art disclosures.4 The test for obviousness under 35 U.S.C.
§ 103 is what the combined teachings of the references would have suggested to one
of ordinary skill in the art.5
Second, the appellant has argued limitations not found in claim 1. It is well-
settled that limitations found only in the specification of a patent application should not
be imported or read into a claim.6 In that regard, it is our opinion that claim 1 does not
require that all edge segments of the tool (e.g., a female die) against which the work
material will impinge to be determined and relieved (e.g., chamfered).7
Third, Abe's teaching that the small chamfer 227 only needs to be provided at
the downstream edge of the die opening does not constitute a "teaching away" from the
claimed invention. As to the specific question of "teaching away," our reviewing court in
In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1131 (Fed. Cir. 1994) stated:
4 See In re Merck & Co. Inc., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir. 1986).
5 See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller,
642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
6 See In re Donaldson, Co., Inc., 16 F.3d 1189, 1195, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994),
In re Priest, 582 F.2d 33, 37, 199 USPQ 11, 15 (CCPA 1978) and In re Prater, 415 F.2d 1393, 1405, 162
USPQ 541, 551 (1969).
7 Claim 1 does require that some edge segments of the tool against which the work material will
impinge to be determined and relieved.
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