Appeal No. 2006-1742
Application No. 10/001,439
references. ANon-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a combination of
references.@ In re Merck & Co., Inc., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed.
Cir. 1986). The test of obviousness is Awhether the teachings of the prior art, taken as
a whole, would have made obvious the claimed invention.@ In re Gorman, 933 F.2d
982, 986, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991).
We find the examiner has provided sufficient evidence to support a prima facie
case of obviousness which remains unrebutted by appellants.
CONCLUSION
The rejection of claims 1, 8-17 and 19 under 35 U.S.C. § 103(a) over Donzis,
Paul and Plaut is affirmed. As our analysis varies from that of the examiner we
designate our decision in this appeal as a new ground of rejection.
This decision contains a new ground of rejection pursuant to 37 CFR ' 41.50(b)
(effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz.
Pat. Office 21 (September 7, 2004)). 37 CFR ' 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial review."
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