Appeal No. 2004-0868
Application 09/742,980
prior art reference, either expressly or under the principles of inherency. See generally,
In re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986); Lindemann
Maschinenfabrik v. American Hoist and Derrick, 730 F.2d 1452, 1458, 221 USPQ 481, 485
(Fed. Cir. 1984). 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 appellants’ 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). It
is also 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); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on
the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
In order to review the examiner’s application of prior art to appealed claims 1 and 3,3 we
must first interpret the language thereof by giving the claim terms their broadest reasonable
interpretation in light of the written description in the specification, including the specification
drawings, as it would be interpreted by one of ordinary skill in this art. See, e.g., 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 claim language at issue is
the recess [of the mating connector] being dimensioned so that during an insertion
process of the plug connector into the mating connector, the guide element [of the plug
3 Appellants state that “[f]or each ground of rejection . . . all claims will be treated as a single
group” (brief, page 5). Thus, we decide this appeal based on appealed claims 1 and 3 as
representative of the respective grounds of rejection. 37 CFR § 1.192(c)(7) (2002).
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