Appeal No. 2004-2028
Application No. 09/423,746
In view of the foregoing, we affirm the examiner’s decision
rejecting Claims 1, 2, 4 through 10, 12 and 13 under the judicially
created doctrine of obviousness-type double patenting as
unpatentable over claims 1, 2, 4 through 10, 12 and 13 of Fagiolini
‘567 in view of Regler.
35 U.S.C. § 103 (Obviousness)6
Under 35 U.S.C. § 103, to establish a prima facie case of
obviousness, there must be some objective teachings or suggestions
in the prior art and/or knowledge generally available to a person
having ordinary skill in the art that would have led such person to
arrive at the claimed subject matter. See generally in re Oetiker,
977 F.2d 1443, 1447-48, 245 USPQ2d 1443, 1446-47 (Fed. Cir.
1992)(Nies, J., concurring); In re Vaeck, 947 F.2d 488, 493, 20
USPQ2d 1438, 1442 (Fed. Cir. 1991).
As evidence of obviousness of the subject matter defined by
claims 1, 2, 4 through 10, 12 and 13 under 35 U.S.C. § 103, the
examiner relies on the combined disclosures of Fagiolini ‘835 and
Regler. Fagiolini ‘835, like Fagiolini ‘567 discussed above,
teaches every limitation of claim 1 of the present application,
6At pages 5 and 6 of the Supplemental Brief, appellants state that “[c]laim 13 is
separately patentable from the remaining claims...” The appellants do not identify any other
groups of “claims” which are to be considered separately in the Supplemental Brief. Therefore,
we select claims 1 and 13 from the claims on appeal and determine the propriety of the
examiner’s Section 103 rejection based on these claims consistent with 37 CFR § 41.37(c)(vii)
(2004). See also In re McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465 (Fed. Cir. 2002).
8
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