Ex Parte Stockman et al - Page 5

               Appeal 2006-2769                                                                             
               Application 09/846,980                                                                       

               V.  PRINCIPLES OF LAW                                                                        
                      Under 35 U.S.C. §103,  the obviousness of an invention cannot be                      
               established by combining the teachings of the prior art references absent                    
               some teaching, suggestion or incentive supporting the combination.                           
               ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577,                               
               221 USPQ 929, 933 (Fed. Cir. 1984).  This does not mean that the cited                       
               prior art references must specifically suggest making the combination.                       
               B.F. Goodrich Co. v. Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582,                        
               37 USPQ2d 1314, 1318 (Fed. Cir. 1996); In re Nilssen, 851 F.2d 1401,                         
               1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988).  Rather, the test for                            
               obviousness is what the combined teachings of the prior art references would                 
               have suggested to those of ordinary skill in the art.  In re Young, 927 F.2d                 
               588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991); In re Keller, 642 F.2d                      
               413, 425, 208 USPQ 871, 881 (CCPA 1981).  In evaluating the prior art                        
               references for a suggestion, it is proper to take into account not only the                  
               specific teachings of the references, but also any inferences which one                      
               skilled in the art would reasonably be expected to draw therefrom.                           
               In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).                               
                      A prima facie case of obviousness exists when the claimed range and                   
               the prior art range do not overlap but are close enough such that one skilled                
               in the art would have expected them to produce products having the same                      
               properties.  Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783,                      
               227 USPQ 773, 779 (Fed. Cir. 1985).  Moreover, “discovery of an optimum                      
               value of a result effective variable in a known process is ordinarily within                 



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