Appeal No. 2005-0429 Page 7
Application No. 09/872,209
In view of the above discussion, it is our view, that since Shinohara teaches all
the structure of claim 1, Noble is not necessary for a proper rejection under
35 U.S.C. § 103 of representative claim 1. A disclosure that anticipates under
35 U.S.C. § 102 also renders the claim unpatentable under 35 U.S.C. § 103, for
“anticipation is the epitome of obviousness.” Jones V. Hardy, 727 F.2d 1524, 1529,
220 USPQ 1021, 1025 (Fed. Cir. 1984). See also In re Francalossi, 681 F.2d 792,
794, 215 USPQ 569, 571 (CCPA 1982); In re Pearson, 494 F.2d 1399, 1402,
181 USPQ 641, 644 (CCPA 1974).2 Accordingly, the Examiner’s obviousness rejection
of representative claim 1 is sustained based on Shinohara alone.
Therefore, we will sustain the Examiner’s rejection under 35 U.S.C. § 103.
II. Whether the Rejection of Claims 7-9 Under 35 U.S.C. § 103 is
proper?
It is our view, after consideration of the record before us, that the evidence
relied upon and the level of skill in the particular art would have suggested to one
of ordinary skill in the art the invention as set forth in claims 7-9. Accordingly, we
affirm.
With respect to independent claim 7, Appellants argue at page 12 of the
brief that it would not have been obvious to establish “a user interface to allow
selection of the onboard timing means or outboard logic circuit.” We find
Appellants’ argument unpersuasive.
2 The Board may rely on less than all of the references applied by the Examiner 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).
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