Appeal No. 2005-0129
Application No. 09/406,353
repeatedly cautioned against employing hindsight by using the appellant's disclosure as
a blueprint to reconstruct the claimed invention from the isolated teachings of the prior
art. See, e.g., Grain Processing Corp. v. American Maize-Prods. Co., 840 F.2d 902,
907, 5 USPQ2d 1788, 1792 (Fed. Cir. 1988).
When determining obviousness, "the [E]xaminer can satisfy the burden of
showing obviousness of the combination ‘only by showing some objective teaching in
the prior art or that knowledge generally available to one of ordinary skill in art would
lead that individual to combine the relevant teachings of the references.’" In re Lee, 277
F.3d 1338, 1343, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002), citing In re Fritch, 972 F.2d
1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992). "Broad conclusory statements
regarding the teaching of multiple references, standing alone, are not ‘evidence.'” In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999). "Mere
denials and conclusory statements, however, are not sufficient to establish a genuine
issue of material fact." Dembiczak, 175 F.3d at 999, 50 USPQ2d at 1617, citing
McElmurry v. Arkansas Power & Light Co., 995 F.2d 1576, 1578, 27 USPQ2d 1129,
1131 (Fed. Cir. 1993).
Further, as pointed out by our reviewing court, we must first determine the scope
of the claim. "[T]he name of the game is the claim." In re Hiniker Co., 150 F.3d
1362,1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998). Therefore, we look to the
5
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007