Appeal No. 2006-2963
Application No. 10/309,969
Höllig’s technique, and therefore de Boor’s technique [Brief, page 7]. The Examiner
argues that determining whether a prima facie case of obviousness is established is not
based on whether one reference teaches away from combining prior art references, but
rather on whether a teaching, suggestion, or motivation exists to combine the
references and whether the skilled artisan would reasonably expect success if the
references were so combined [Answer, page 19].
We will sustain the Examiner’s obviousness rejection of claims 2-7, 12-17, and
22-27. At the outset, we note that Appellants have not contested the Examiner’s
technical reasoning recited in the rejection on pages 6-14 of the Answer apart from
arguing that Peters teaches away from de Boor. In this regard, Appellants have not
persuasively rebutted the Examiner’s position regarding the perceived differences
between Peters and the claimed invention, and the Examiner’s interpretation of the
scope and content of de Boor as teaching or suggesting the limitations of claims 2-7,
12-17, and 22-27 that are absent from Peters.
Accordingly, the sole issue before us is whether the de Boor reference is properly
combinable with Peters. In making this assessment, we recognize that we must
consider the cited references in their entirety, including portions that teach away from
the claimed invention. See W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d
1540, 220 USPQ 303 (Fed. Cir. 1983). See also MPEP § 2141.02(VI). But
“obviousness must be determined in light of all the facts, and there is no rule that a
single reference that teaches away will mandate a finding of nonobviousness.”
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165, 77 USPQ2d 1865, 1870 (Fed.
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