Appeal No. 2005-0342
Application No. 09/758,787
three floating point values as claimed and does not teach that using floating point
variables would render the device inoperative. While we concur with appellant
that Suzuki’s invention seeks to improve upon the system which uses floating
point calculations by using integer values, this does not render the appellant’s
claims to the use of floating point calculations unobvious. Our reviewing court
has stated “a known or obvious composition does not become patentable simply
because it has been described as somewhat inferior to some other product for
the same use.” In re Gurley 27 F.3d 551, 553, 31 USPQ2d 1130, 1132 (Fed.
Cir. 1994). Accordingly, we sustain the examiner’s rejection of claims 1, 4, 5, 7
and 9 through 15 and 17 through 23 under 35 U.S.C. § 103 as unpatentable over
Suzuki in view of Nelson and the examiner’s rejection of claims 8, 16 and 24
under 35 U.S.C. § 103 as unpatentable over Suzuki in view of Nelson and Goel.
In affirming a multiple reference rejection under 35 U.S.C. 103, the board
may rely on one reference alone in an obviousness rationale without designating
it as a new ground of rejection. In re Bush, 296 F.2d 491, 496, 131 USPQ 263,
266-67 (CCPA 1961; In re Boyer, 363 F.2d 455, 458, n.2, 150 USPQ 441, 444,
n.2 (CCPA 1966) . However, an anticipation rationale may constitute a new
ground of rejection. In re Meyer, 599 F.2d 1026, 1031, 202 USPQ 175, 179
(CCPA 1979); In re Echerd 471 F.2d 632, 635, 176 USPQ 321, 323 (CCPA
1973).
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