Appeal No. 2001-2267
Application 08/828,687
present invention was known in the art.
While Appellant makes no representation as to
whether the problem solved by the present
invention was appreciated by others,
Appellant submits that the Examiner cannot
rely on such a statement as prior art or as
motivation to combine prior art but must find
such a teaching in a prior art reference
[brief, pages 11-12].
The issue of whether the problem solved by appellant’s invention
was known in the art could affect the patentability of the claims
before us. As noted above, we agree with appellant that the
specification by itself is not admitted prior art, and
appellant’s argument in the brief must be taken as factual since
we presume that appellant would have filed an information
disclosure statement under the requirements of 37 CFR § 1.56 if
appellant was aware of relevant prior art with respect to this
particular issue. Therefore, as it stands, there is no evidence
on this record that the prior art appreciated the problem that
appellant’s invention was designed to solve. The linchpin of the
examiner’s rejection is that the artisan would have been
motivated to solve the problem identified by appellant in the
background section of the specification. Since the portion of
the specification relied on by the examiner is not admitted prior
art for reasons discussed above, the examiner’s rejection
completely falls apart. There is no way that the claimed
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007