Appeal No. 2003-1203
Application 09/594,831
a single prior art reference, either expressly or under the principles of inherency. See generally,
In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997); Diversitech
Corp. v. Century Steps, Inc., 850 F.2d 675, 677-78, 7 USPQ 1315, 1317 (Fed. Cir. 1988);
Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick, 730 F.2d 1452, 1458, 221
USPQ 481, 485 (Fed. Cir. 1984). Whether the teachings and inferences that one skilled in this
art would have found in the disclosure of an applied reference would have placed this person in
possession of the claimed invention, taking into account this person’s own knowledge of the
particular art, is a question of fact. See generally, In re Graves, 69 F.3d 1147, 1152, 36 USPQ2d
1697, 1701 (Fed. Cir. 1995), and cases cited therein (a reference anticipates the claimed
invention if in fact an element that is not disclosed therein “is within the knowledge of the skilled
artisan.”); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968) (“[I]n considering
the disclosure of a reference, it is proper to take into account not only specific teachings of the
reference but also the inferences which one of ordinary skill in the art would reasonably be
expected to draw therefrom.”).
It is further well settled that in order to establish a prima facie case of obviousness under
§ 103(a), the examiner must show that some objective teaching, suggestion or motivation in the
applied prior art taken as a whole and/or knowledge generally available to one of ordinary skill in
this art would have led that person to the claimed invention as a whole, including each and every
limitation of the claims arranged as required by the claims, without recourse to the teachings in
appellant’s disclosure. See generally, In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453,
1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573,
37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re Fritch, 972 F.2d 1260, 1265-66, 23 USPQ2d
1780, 1783-84 (Fed. Cir. 1992); In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992); In re Laskowski, 871 F.2d 115, 10 USPQ2d 1397 (Fed. Cir. 1989); In re Fine,
837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988). In this respect, it is well
settled that a reference stands for all of the specific teachings thereof as well as the inferences
one of ordinary skill in this art would have reasonably been expected to draw therefrom, see In re
Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir. 1992); Preda, supra,
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