Appeal No. 2005-2220
Application No. 09/335,189
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). It is the
burden of the examiner to establish why one having ordinary skill in the art would
have been led to the claimed invention by the express teachings or suggestions
found in the prior art, or by the implication contained in such teachings or
suggestions. In re Sernaker 702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir.
1983). “The motivation, suggestion or teaching may come explicitly from
statements in the prior art, the knowledge of one of ordinary skill in the art, or, in
some cases the nature of the problem to be solved.” In re Huston 308 F.3d
1267, 1278, 64 USPQ2d 1801, 1810 (Fed. Cir. 2002, citing In re Kotzab 217
F.3d 1365, 1370, 55 USPQ 1313, 1317 (Fed. Cir. 2000)).
While we concur with the examiner that Halverson teaches a plurality of
printers (see figure 1) and a correlation between drug codes and drug data (see
figures 8 and 16 (which depict data fields in a database)), we do not find that the
combination of the references teaches “a correlation between the drug type
codes and the printer codes” as claimed in claim 26. Claim 26 includes the
limitations of “a memory for storing … a printer setting file defining a correlation
between the drug type codes and the printer codes”; “display means for
displaying said correlation between the drug type codes and the printer codes on
said display device”; and “correlating means for correlating each of the plurality of
sets of data [drug data] with one of the drug type codes.” Thus, claim 26
includes two correlations, printer codes to drug codes and drug codes to drug
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