Appeal No. 2005-2642
Reexamination Control No. 90/005,841
I. The merits of the rejection of claims 24-26, 28-32, 34-37, and 39-44 for
obviousness over Mukherjee in view of Musmanno
The legal conclusion that a claim is obvious within § 103(a) depends on at least
four underlying factual issues: (1) the scope and content of the prior art; (2) the
differences between the prior art and the claims at issue; (3) the level of ordinary skill in
the pertinent art; and (4) an evaluation of any relevant secondary
considerations. See Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17, 148
USPQ 459, 467 (1966). As explained in Princeton Biochemicals Inc. v. Beckman
Coulter Inc., 411 F.3d 1337, 75 USPQ2d 1051, 1054 (Fed. Cir. 2005), it is also
necessary to consider the question of motivation:
As this court pointed out in Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1275
[69 USPQ2d 1686, 1690] (Fed. Cir. 2004), in making the assessment
of differences between the prior art and the claimed subject matter,
section 103 specifically requires consideration of the claimed invention “as
a whole.” . . .
. . . This “as a whole” assessment of the invention requires a
showing that an artisan of ordinary skill in the art at the time of invention,
confronted by the same problems as the inventor and with no knowledge
of the claimed invention, would have selected the various elements from
the prior art and combined them in the claimed manner. Id. In other
words, section 103 requires some suggestion or motivation, before the
invention itself, to make the new combination. See In re Rouffet, 149 F.3d
1350, 1355-56 [47 USPQ2d 1453, 1456] (Fed. Cir. 1998).
Appellant has not submitted any declarations or affidavits addressing the level of
ordinary skill in the art. Therefore, the level of skill in the art must be ascertained from
the references themselves. See In re Oelrich, 579 F.2d 86, 91, 198 USPQ 210, 214
(CCPA 1978) ("the PTO usually must evaluate both the scope and content of the prior
art and the level of ordinary skill solely on the cold words of the literature"); In re GPAC
Inc., 57 F.3d 1573, 1579, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995) (Board did not err in
adopting the approach that the level of skill in the art was best determined by the
references of record).
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