Appeal No. 2003-1639 Page 5
Application No. 09/496,220
established by presenting evidence that would have led one of ordinary skill in the art to
combine the relevant teachings of the references to arrive at the claimed invention.
See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In re
Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
The United States Patent and Trademark Office has consistently sought to follow
Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966) in the
consideration and determination of obviousness under 35 U.S.C. 103. The four factual
inquires enunciated therein as a background for determining obviousness are briefly as
follows: (A) Determining of the scope and contents of the prior art; (B) Ascertaining the
differences between the prior art and the claims in issue; (C) Resolving the level of
ordinary skill in the pertinent art; and (D) Evaluating evidence of secondary
considerations.
Against this background, the obviousness or non-obviousness of the claimed
subject matter under 35 U.S.C. § 103 must be determined. However, in this case, the
examiner has not on the record either (1) determined the relevant scope and content of
the applied prior art; or (2) ascertained the differences between the applied prior art
(i.e.,Shiraiwa) and the claims in issue. Since the examiner has not ascertained the
differences between Shiraiwa and the claims in issue, the examiner can not have
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