Appeal No. 2002-0912 Page 3
Application No. 08/913,187
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellants regarding the above-noted rejections, we make reference to the Answer
(Paper No. 23) and the final rejection (Paper No. 18) for the examiner's complete
reasoning in support of the rejections, and to the Brief (Paper No. 22) for the appellants’
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
All of the rejections are under 35 U.S.C. § 103(a). 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
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007