Appeal No. 1999-1878 Page 4
Application No. 08/799,411
of obviousness. See In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d
1468, 1471-1472, 223 USPQ 785, 787-788 (Fed. Cir. 1984).
Accordingly, we will not sustain the examiner’s rejection.
We point out that in a rejection under 35 U.S.C. § 103,
it is fundamental that all elements recited in a claim must be
considered and given effect in judging the patentability of
that claim against the prior art. See In re Geerdes, 491 F.2d
1260, 1262-63, 180 USPQ 789, 791 (CCPA 1974). Thus, a prima
facie case of obviousness is established by showing that some
objective teaching or suggestion in the applied prior art
taken as a whole and/or knowledge generally available to one
of ordinary skill in the art would have led that person to the
claimed invention, including each and every limitation of the
claims, without recourse to the teachings in appellants’
disclosure. See generally In re Oetiker, 977 F.2d 1443, 1447-
48, 24 USPQ2d 1443, 1446-47 (Fed. Cir. 1992) (Nies, J.,
concurring). This showing can be established on similarity of
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