Appeal 2006-3377
Application 09/929,075
The skilled artisan would have had a reasonable expectation of
success, given Akamatsu’s suggestion to make such a combination.
Appellants do not provide any rebuttal evidence showing their solid
preparations are more stable than those of Akamatsu, or showing their
process for making their claimed multicore structure varies from those
disclosed in the prior art. (See Answer 6.)
PRINCIPLES OF LAW
During examination proceedings, “claims are given their broadest
reasonable interpretation consistent with the specification. [This]
proposition ‘serves the public interest by reducing the possibility that claims,
finally allowed, will be given broader scope than is justified,’ . . . and it is
not unfair to applicants, because ‘before a patent is granted the claims are
readily amended as part of the examination process’. . . .” In re Hyatt,
211 F.3d 1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000) (internal
citations omitted).
“While the ultimate conclusion of obviousness is for the court to
decide as a matter of law, several factual inquiries underlie this
determination. These inquiries include the scope and content of the prior art,
the level of ordinary skill in the field of the invention, [and] the differences
between the claimed invention and the prior art.” SIBIA Neurosciences, Inc.
v. Cadus Pharmaceutical Corp., 225 F.3d 1349, 1355, 55 USPQ2d 1927,
1930 (Fed. Cir. 2000) (internal citations omitted).
“In appropriate circumstances, a single prior art reference can render a
claim obvious. However, there must be a showing of a suggestion or
motivation to modify the teachings of that reference to the claimed invention
in order to support the obviousness conclusion. This suggestion or
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