Appeal No. 2003-0690 Page 3
Application No. 09/247,557
(Paper No. 24, mailed November 4, 2002) for the examiner's complete reasoning in
support of the rejections, and to the brief (Paper No. 23, filed August 2, 2002) for the
appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. Upon evaluation of
all the evidence before us, it is our conclusion that the evidence adduced by the
examiner is insufficient to establish a case of obviousness with respect to the claims
under appeal. Accordingly, we will not sustain the examiner's rejection of claims 5 to 7,
9 to 16, 18 and 20 to 22 under 35 U.S.C. § 103. Our reasoning for this determination
follows.
A critical step in analyzing the patentability of claims pursuant to 35 U.S.C.
§ 103 is casting the mind back to the time of invention, to consider the thinking of one
of ordinary skill in the art, guided only by the prior art references and the then-accepted
wisdom in the field. See In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617
(Fed. Cir. 1999). Close adherence to this methodology is especially important in cases
where the very ease with which the invention can be understood may prompt one "to
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