Appeal No. 2005-0126
Application No. 09/967,791
ELLIS, Administrative Patent Judge, dissenting.
Contrary to the majority, I find some merit in the examiner’s position. While the
examiner has not fully capitalized on the strengths of the applied prior art, I do not feel it
necessary to reverse the rejection. In my view, the examiner’s position, as is most often
the case given different perspectives and opinion, is in need of further explanation. To
the extent that such explanation diverges from the examiner’s reasons, the support for
the examiner’s position could, in the very least, have been denominated as a new
ground of rejection.
A determination of obviousness is based on several factual inquiries concerning
(i) the scope and content of the prior art, (ii) the level of ordinary skill in the art, (iii) the
differences between the claimed invention and the prior art, and
(iv) secondary considerations of nonobviousness, such as commercial success, failure
of others, unexpected results, etc. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). It is well established, as pointed out by the majority, that the examiner sustains
the initial burden of establishing a prima facie case of obviousness. Pro-Mold &Tool Co.
v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir.
1996). In this regard, there must be some teaching in the art, or knowledge generally
available in the art, that would lead one having ordinary skill in the art to combine the
relevant teachings of the references. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596,1598 (Fed. Cir. 1988). “The motivation, suggestion or teaching may come
explicitly from the statements in the prior art, the knowledge of one of ordinary skill in
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