Appeal No. 2002-0218
Application No. 09/332,415
Accordingly, we are constrained to summarily affirm the
examiner’s decision provisionally rejecting claims 1, 2, 7, 9, 12
through 20, 22 and 23 under the judicially created doctrine of
obviousness-type double patenting.
35 U.S.C. § 103
Under 35 U.S.C. § 103, to establish a prima facie case of
obviousness, there must be some objective teachings or
suggestions in the applied prior art references4 and/or knowledge
generally available to a person having ordinary skill in the art
that would have led such person to arrive at the claimed subject
matter. See generally In re Oetiker, 977 F.2d 1443, 1447-48,
24 USPQ2d 1443, 1446-47 (Fed. Cir. 1992)(Nies, J., concurring);
In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir.
1991). The knowledge generally available to a person having
ordinary skill in the art would include the appellant’s admission
regarding what was known in the art at the time of the
appellant’s invention. See In re Nomiya, 509 F.2d 566, 570-71,
184 USPQ 607, 611-12 (CCPA 1975)(the admitted prior art in an
applicant’s specification may be used in determining the
4 In evaluating the prior art references, it is proper to
take into account not only the specific teachings therein, but
also the inferences which one skilled in the art would reasonably
be expected to draw therefrom. See In re Preda, 401 F.2d 825,
826, 159 USPQ 342, 344 (CCPA 1968).
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