Appeal No. 2004-1917 Page 3
Application No. 09/853,096
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejection, we make reference to the final
rejection (Paper No. 4, mailed October 21, 2002) and the answer (Paper No. 7, mailed
May 22, 2003) for the examiner's complete reasoning in support of the rejection, and to
the brief (Paper No. 6, filed November 25, 2002) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
A critical step in analyzing the patentability of claims pursuant to 35 U.S.C.
§ 103 is casting the mind back to the time of invention, to consider the thinking of one
of ordinary skill in the art, guided only by the prior art references and the then-accepted
wisdom in the field. See In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617
(Fed. Cir. 1999). Close adherence to this methodology is especially important in cases
where the very ease with which the invention can be understood may prompt one "to
fall victim to the insidious effect of a hindsight syndrome wherein that which only the
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