Appeal 2006-2632
Application 09/881,807
1596, 1598 (Fed. Cir. 1988).1 At best, the Examiner’s reasons for
combining the teachings of Narasimhan and Cotteret establish a “general
incentive” to make the proposed combination. While a "general incentive"
may make an approach "obvious to try" it does not make the invention
obvious. In re Deuel, 51 F.3d 1552, 1559, 34 USPQ2d 1210, 1216 (Fed.
Cir. 1995). See In re O'Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1680
(Fed. Cir. 1988) ("Obvious to try" is not the standard of obviousness under
35 U.S.C. § 103.).
The rejection is reversed.
Rejection of claims 32-39, 49-51, 87-94, 104-106, 142-149, and 159-
161 as unpatentable over Narasimhan in view of Cotteret and further
in view of Casperson
1See also, Princeton Biochemicals, Inc. v. Beckman Coulter, Inc., 411 F.3d1
1332, 1337, 75 USPQ2d 1051, 1054 (Fed.Cir.2005)(citations omitted):
[I]n 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.” Inventions
typically are new combinations of existing principles or
features. The “as a whole” instruction in title 35 prevents
evaluation of the invention part by part. Without this important
requirement, an obviousness assessment might successfully
break an invention into its component parts, then find a prior art
reference corresponding to each component. Id. This line of
reasoning would import hindsight into the obviousness
determination by using the invention as a roadmap to find its
prior art components. Further, this improper method would
discount the value of combining various existing features or
principles in a new way to achieve a new result-often the
essence of invention.
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