Appeal No. 1999-2225
Application No. 08/815,441
factors such as the nature of the invention, the predictability
of the art, and the relative skill of persons in the art. For
example, the examiner argues that the claimed invention is
inoperative because an inlet or outlet is not disclosed in the
specification. However, the examiner has not established that
any undue experimentation would be involved in providing an
operative canister for the claimed vacuum assembly. While the
examiner would have us believe that any knowledge in the prior
art needed to establish enablement must be recited in the
specification (Examiner's answer, pages 3-4), this is not the
law. Spectra-Physics, Inc. v. Coherent, Inc. , 827 F.2d 1524,
1534, 3 USPQ2d 1737, 1743 (Fed. Cir. 1987)("A patent need not
teach, and preferably omits, what is well known in the art.");
Paperless Accounting, Inc. v. Bay Area Rapid Transit Sys. , 804
F.2d 659, 664, 231 USPQ 649, 653 (Fed. Cir. 1986)("A patent
applicant need not include in the specification that which is
already known to an available to the public."); Hybritech Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94
(Fed. Cir. 1986)("[A] patent need not teach, and preferably
omits, what is well known in the art.").
Regarding the examiner's reasoning as set forth in paragraph
3 of the final Office action, we agree with the appellants'
analysis as set forth in the appeal brief (pages 8-9).
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