Appeal No. 2005-2150
Application No. 10/407,084
All of the disclosures in a reference must be evaluated for what they fairly teach
one of ordinary skill in the art. In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510
(CCPA 1966). In a § 103 inquiry “‘the fact that a specific [embodiment] is taught to be
preferred is not controlling, since all disclosures of the prior art, including unpreferred
embodiments, must be considered.’” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804,
807, 10 USPQ2d 1843, 1846 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747,
750, 192 USPQ 278, 280 (CCPA 1976)). We are not persuaded that the references as
applied by the examiner cannot properly be combined to show prima facie obviousness
of the subject matter as a whole of instant claim 7.
We have considered all of appellants’ arguments in the Brief but are not
persuaded of error in the § 103 rejection of claims 1 through 20. The doctrine of waiver
applies to any arguments not in the Brief that appellants could have presented. See 37
CFR § 41.37(c)(1)(vii) (Sept. 13, 2004) (“Any arguments or authorities not included in
the brief or a reply brief filed pursuant to § 41.41 will be refused consideration by the
Board, unless good cause is shown.”).
CONCLUSION
The rejection of claims 1-20 under 35 U.S.C. § 103 is affirmed.
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