Appeal No. 2004-1108
Application 09/756,833
functionally defined limitations of the claimed backpack. See Schreiber, 128 F.3d at 1478,
44 USPQ2d at 1432, and cases cited therein. This appellant has not done.
Finally, the argument that the claimed invention “teaches away” from Rota is not an
argument that addresses the issue of anticipation. Cf. Celeritas Technologies Ltd. V. Rockwell
International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522 (Fed. Cir. 1998) (“[T]he
question whether a reference ‘teaches away’ from the invention is inapplicable to an anticipation
analysis.”).
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of anticipation found in Rota with appellant’s countervailing evidence of
and argument for no anticipation in fact and find that the claimed invention encompassed by
appealed claim 1 is anticipated as a matter of fact under 35 U.S.C. § 102(e).
Turning now to the grounds of rejection under § 103(a), appealed claims 2, 3, 4, 8, 9 are
rejected over Rota alone and as combined with McDermott, Kearl, Mott or Cannaday (see above
pp. 2-3), and appealed claims 14, 16 and 17 are rejected over the combination of Ogami and Rota
alone and as combined with McDermott or Kearl (see above p. 3). We find that claims 2 and 3
depend on appealed independent claim 1, while claims 4, 8 and 9 depend on claim 2, and that
claims 16 and 17 depend on appealed dependent claim 15 which depends on independent claim
14. Claims 1 and 15 defined the claimed backpack in the same language. Claim 2 further limits
claim 1 by specifying that the “internal storage volume” has “at least” the dimensions set forth
therein. Claims 3, 4, 8 and 9, and claims 16 and 17 further limit claims 2 and 15, respectively, by
specifying an additional component on the claimed backpack, e.g., “a plurality of legs” in claims
3 and 16.
The examiner finds with respect to appealed claim 2 that one of ordinary skill in the art
following Rota would have made a backpack according to the reference having dimensions
falling within the dimensions specified in this claim, because determine an optimum value for a
result effective variable, such as the volume of a backpack is within the skill in the art, relying on
the authority of In re Boesch, 617 F.2d 272, 275-76, 205 USPQ 215, 218-19 (CCPA 1980)
(answer, page 4). The examiner finds with respect to appealed claim 14 that the combined
teachings of Ogami and Rota would have reasonably suggested to one of ordinary skill in this art
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