Appeal No. 1999-2492 Page 6
Application No. 08/801,676
represent admitted prior art, the stated rejections fall3
short of establishing the obviousness of the claimed subject
matter.
For the foregoing reasons, we will not sustain any of the
examiner’s § 103 rejections.
CONCLUSION
The decision of the examiner to reject claims 1-5, 14 and
15 under 35 U.S.C. § 103 as being unpatentable over Schubert
in view of FR 2,303,843, either of White or Iwasa, and alleged
3Where the specification clearly designates something as
prior art, it is permissible to use that information in the
determination of obviousness. See In re Nomiya, 509 F.2d 566,
571-72, 184 USPQ 607, 612 (CCPA 1975). However, a case of
obvious can not be made on the basis of appellant’s own
statements; that is, we must view the prior art without
reading into that art appellant’s teachings. See In re
Sponnoble, 405 F.2d 578, 585, 160 USPQ 237, 243 (CCPA 1969).
Only what the specification clearly and unambiguously
identifies as prior art can be used as evidence of obviousness
against the claims. Moreover, not all prior knowledge,
written descriptions or prior uses constitute prior art within
the meaning of 35 U.S.C. § 103.
Since we find that the examiner has not furnished an
adequate basis for combining the relied upon teachings of the
references to arrive at appellant’s invention, we need not
decide whether the examiner has met the burden of establishing
that any or all of the specification passages relied upon
constitute an admission of prior art, especially in the face
of appellant’s implied challenge set forth in the brief (page
6).
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