Interference No. 105,188
Short v. Punnonnen
skill of a person having ordinary skill in the art at the
pertinent time. We conclude that the method defined by Claim 47
of Punnonen’s involved application prima facie would have been
obvious to persons having ordinary skill in the art as of the
5 effective filing date of Punnonen’s application.
Prior art disclosures should be considered for everything
they would have taught a person having ordinary skill in the art
when the issue of patentability under 35 U.S.C. § 103 in view of
that prior art is raised. “The description of . . . ‘specific
10 preferences in connection with . . . [the] generic’ is
determinative in an analysis of anticipation under 35 U.S.C.
§ 102. . . . But in a section 103 inquiry, ‘the fact that a
specific [embodiment] is taught to be preferred is not
controlling, since all disclosures of the prior art, including
15 unpreferred embodiments, must be considered.’ In re Lamberti,
545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976).” Merck & Co.
Inc. V. Biocraft Laboratories Inc., 874 F.2d 804, 807, 10 USPQ2d
1843, 1846 (Fed. Cir. 1989). In re Fracalossi, 681 F.2d 792, 794
n.1, 215 USPQ 569, 570 n.1 (CCPA 1982), teaches:
20 It is axiomatic that a reference must be considered in its
entirety, and it is well established that the disclosure of
a reference is not limited to specific working examples
contained therein. In re Lamberti, 545 F.2d 747, 750,
192 USPQ 278, 280 (CCPA 1976).
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