Appeal No. 2005-0956 Page 10
Application No. 09/342,866
35 U.S.C. § 103, we must first delineate the invention as a whole. In delineating
the invention as a whole, we look not only to the subject matter which is literally
recited in the claim in question . . . but also to those properties of the subject
matter which are inherent in the subject matter and are disclosed in the
specification . . . Just as we look to a chemical and its properties when we
examine the obviousness of a composition of matter claim, it is this invention as
a whole, and not some part of it, which must be obvious under 35 U.S.C. § 103.”
In re Antonie, 559 F.2d 618, 620, 195 USPQ 6,8 (CCPA 1977) (emphasis in
original) (citations omitted).
Appellant points to no language in claim 1, nor do we find language in
claim 1, that requires features 2-5 to be inherently included in the claimed
invention. Contrast this to In re Antonie, where specific claim language was the
basis for including the inherent feature or property. Specifically, the claimed
wastewater treatment device had a tank volume to contractor area of 0.12
gal./sq. ft. The court found the invention, as a whole, was the ratio of 0.12 and its
inherent property that the claimed devices maximized treatment capacity
regardless of other variables in the devices. The prior art did not recognize that
treatment capacity was a function of the tank volume to contractor ratio, and
therefore the parameter optimized was not recognized in the art to be a result-
effective variable.
Finally, we address feature 1) above, Appellant argues that Marino fails to
teach “a direct link between performance of a PDA and the price of the product.”
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