Appeal 2006-3072
Application 10/419,763
be possible to obtain a patent for an old and unchanged process. [Citations
omitted.]”); In re Skoner, 517 F.2d 947, 950-51, 186 USPQ 80,
82-83 (CCPA 1975) (“Appellants have chosen to describe their invention in
terms of certain physical characteristics . . . . Merely choosing to describe
their invention in this manner does not render patentable their method which
is clearly obvious in view of [the reference].” (citation omitted)).
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Walton, Nakamura, and Martinot-Lagarde with
Appellants’ countervailing evidence of and argument for nonobviousness,
and conclude that the claimed invention encompassed by appealed claims
1 through 7, 27 through 34, and 36 through 43 would have been obvious as a
matter of law under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is affirmed.
OTHER ISSUES
In view of our affirmance of the decision of the Primary Examiner, we
decline to exercise our authority under 37 C.F.R. § 41.50(b) (2006) and enter
a new ground of rejection of pending claims 8, 35, and 44 (see above note 1)
over the combined teachings of Walton, Nakamura, and
Martinot-Lagarde, as we considered this combination of references above,
leaving it to the Examiner to consider this matter upon any further
examination of the pending claims in this Application upon disposition of
this appeal.
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