Appeal No. 2004-0951
Application 09/498,309
Suzuki.1,2,3
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 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. 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).
We find that, when considered in light of the written description in the specification,
including the drawings, as interpreted by one of ordinary skill in this art, see, e.g., In re Morris,
1 We refer to the translation of Suzuki, published unexamined Japanese patent application JP 2-
251012, prepared for the USPTO by FLS, Inc (October 2003).
2 Answer, pages 4-5; references cited at answer, page 3. A copy of the appealed claims is in the
appendix to the brief. Appealed claims 10 through 21 are also of record and have been withdrawn
from consideration by the examiner.
3 We have not considered the other references discussed by the examiner in the answer (pages 7-
10) because they have not been cited in the statement of any ground of rejection. See In re Hoch,
428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970); compare Ex parte Raske,
28 USPQ2d 1304, 1304-05 (Bd. Pat. App. & Int. 1993).
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