Appeal No. 2002-2071
Application 09/428,451
The appellants argue (request, pages 1-2) that we concluded
that “the combined teachings of the references would have fairly
suggested the appellants’ claimed invention to one of ordinary
skill in the art” (decision, page 5) without referring to or
commenting on the appellants’ argument that “[i]n view of the
foregoing referred to ... factual evidence, the burden of
providing a proper basis for a legal judgment of obviousness
under 35 U.S.C. § 103(a) has not been met” (brief, page 5). The
“foregoing referred to ... factual evidence” referred to by the
appellants is the appellants’ statement regarding what each piece
of applied prior art discloses separately (brief, page 4). Our
response was as follows (decision, page 5):
The appellants argue that none of the admitted
prior art, Morishige, Scollard or Gray discloses all
elements of the claimed invention (brief, page 4).
This argument is not well taken because the appellants
are attacking the references individually when the
rejection is based on a combination of references. See
In re Keller, 642 F.2d 413, 426, 208 USPQ 871, 882
(CCPA 1981); In re Young, 403 F.2d 754, 757-58, 159
USPQ 725, 728 (CCPA 1968). As discussed above, the
combined teachings of the references would have fairly
suggested the appellants’ claimed invention to one of
ordinary skill in the art.
Thus, we referred to and commented on the appellants’ argument.
The appellants do not allege that our response to this argument
was in error.
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