Appeal No. 2004-1671
Application No. 09/905,024
and closing stations (Brief, p. 6). Finally, appellant notes that
only he teaches the specific advantages inherent in the claimed
system (Brief, p. 7).
Appellant takes the wrong approach to the obviousness
determination. The purpose of the inclusion of prior art in an
obviousness rejection is to provide evidence of what those of
ordinary skill in the art knew at the time the invention was made.
The references serve as a spring board from which the decision
maker can step back in time and into the shoes of one of ordinary
skill in the art at the time of the invention. Panduit Corp. v.
Dennison Mfg. Co., 810 F.2d 1561, 1566-67, 1 USPQ2d 1593, 1595-96
(Fed. Cir.), cert. denied, 481 U.S. 1052 (1987). From the prior
art a certain amount of knowledge can be imputed to one of ordinary
skill in the art. How that knowledge is stated is of no matter: It
need not be conveyed directly nor must it be the main topic of
discussion within a particular prior art reference. See Merck & Co
v. Biocraft Laboratories, 874 F.2d 804, 807, 10 USPQ2d 1843, 1847
(Fed. Cir. 1989) (A reference may be relied upon for all that it
would have reasonably suggested to one having ordinary skill in the
art, including non-preferred embodiments); In re Heck, 699 F.2d
1331, 1333, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re
11
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: November 3, 2007