Appeal No. 2003-1494
Application 09/685,178
above, and further in view of Seitter et al.1,2 We refer to the examiner’s answer and to
appellant’s brief and reply brief for a complete exposition of the opposing views of the parties.
It is 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).
The dispositive issue in this appeal is whether Douglas would have reasonably suggested
to one of ordinary skill in this art to use “a pressure-sensing switch having a single operating
point” in an on demand fluid handling system as required by each of appealed independent
claims 1 and 7. We find that, when considered in light of the written description in the
specification as interpreted by one of ordinary skill in this art, see, e.g., In re Hyatt, 211 F.3d
1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1054-55,
44 USPQ2d 1023, 1027 (Fed. Cir. 1997), In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320,
1322 (Fed. Cir. 1989), this plain language of the appealed claims simply requires a pressure-
sensing switch that operates at a single pre-set pressure. See specification, page 3, line 20, to
page 4, line 3; see also brief, page 4, lines 5-8, and page 6, lines 8-9, and reply brief, page 2. We
cannot agree with the examiner’s position that since the pressure sensing switch in the preferred
embodiment in the specification appears to have two operating points (page 6, line 20, to page 8,
line 4), the subject claim language would encompass a switch that functions in the same manner
(answer, pages 5-6). As the examiner notes (id., page 6), limitations from the specification are
1 Appealed claims 1 through 11 are all of the claims in the application. See the appendix to the
brief.
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