Appeal 2006-2776
Application 09/970,279
required by claim 35. These argument are not persuasive for reasons stated
by the Examiner in the Answer (p. 8) and as disclosed by Lemelson (col. 2,
ll. 57-62; col. 4, ll. 56-68; and col. 15, ll. 34-41). We find that Lemelson’s
disclosure of “two or more streams of matter” that intersect and react in the
system thereof is a description of a reaction system for combining three
reactants as recited in claim 28 and a description of a reaction system
including more than two inlets as required by claim 35 (see Lemelson; col.
15, ll. 34-41). We note that claim 28 is not limited to a system wherein the
three reactants are combined along the reaction path before being intersected
by a light beam (Reply Br. 5). Appellants cannot establish patentability for
their claimed system on the basis of features that do not appear in the
rejected claims. See In re Self, 671 F.2d 1344, 1348, 213 USPQ 1, 5 (CCPA
1982).
On this record, Appellants have not established reversible error in the
Examiner’s anticipation rejection. It follows that we shall sustain the
Examiner’s § 102(b) rejection over Lemelson.
§ 103(a) Rejections
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary consideration. Graham v. John
Deere Co. of Kansas City, 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
“[A]nalysis [of whether the subject matter of a claim is obvious] need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
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