Appeal No. 2004-0481
Application 09/783,260
In order to establish a prima facie case of obviousness, 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 Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Fritch,
972 F.2d 1260, 1265-66, 23 USPQ2d 1780, 1783-84 (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 re Dow Chem. Co., 837 F.2d 469, 473, 5
USPQ2d 1529, 1531-32 (Fed. Cir. 1988). The requirement for objective factual underpinnings
for a rejection under § 103(a) extends to the determination of whether the references can be
combined. See In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433-34 (Fed. Cir. 2002), and
cases cited therein.
We agree with appellant (brief, e.g., pages 5-6) that the issues in this appeal as to both
grounds of rejection, center on the claim language “means for removing air from an interior of
said [elongated] conduit [having one end fluidly connected to said reservoir in a tank] . . . said
removing means comprising an air bleed fluid circuit fluidly connected to said conduit adjacent
said nozzle downstream from said gate valve [connected in series between said one end of said
conduit and said reservoir]” in appealed claim 1. In giving the claim terms their broadest
reasonable interpretation in light of the written description in the specification as interpreted by
one of ordinary skill in this art, see, e.g., In re Thrift, 298 F.3d 1357, 1364, 63 USPQ2d 2002,
2006 (Fed. Cir. 2002); 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), the plain
language of the appealed claims specifies an apparatus in which the air removing means is fluidly
connected to the conduit adjacent to the nozzle downstream from the gate valve.
The examiner contends that Strong discloses, inter alia, “an air bleed fluid circuit 24” but
does not disclose, inter alia, a tank or a gate valve, finding that one of ordinary skill in this art
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