Appeal 2006-1971
Application 10/144,224
1 PRINCIPLES OF LAW
2
3 On appeal, Appellant bears the burden of showing that the Examiner
4 has not established a legally sufficient basis for combining the teachings of
5 the applied prior art. Appellant may sustain this burden by showing that,
6 where the Examiner relies on a combination of disclosures, the Examiner
7 failed to provide sufficient evidence to show that one having ordinary skill
8 in the art would have done what Appellant did. United States v. Adams, 383
9 U.S. 39 (1966); In re Kahn, 441 F.3d 977, 987-988, 78 USPQ2d 1329, 1336
10 (Fed. Cir. 2006); DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
11 Patrick, Co., 464 F.3d 1356, 1360-1361, 80 USPQ2d 1641, 1645 (Fed. Cir.
12 2006). The mere fact that all the claimed elements or steps appear in the
13 prior art is not per se sufficient to establish that it would have been obvious
14 to combine those elements. United States v. Adams, id; Smith Industries
15 Medical Systems, Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1356, 51 USPQ2d
16 1415, 1420 (Fed. Cir. 1999).
17
18 ANALYSIS
19 From our review of the entire record and the findings of fact, supra,
20 we hold, for the reasons which follow, that the teachings and suggestions of
21 the applied prior art would have suggested the invention of claims 1, 3-10,
22 22-17, 19, and 20.
23 We begin our analysis with claims 1, 3-6, and 19. From the
24 description of Steuer that the separation distances can be optimized; the
25 description in Soller that the reflectance LEDs and detector can have a
11
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