Appeal 2007-0642
Application 10/267,877
Additionally, since the language in independent claim 13 is not
commensurate in scope with the limitations in independent claim 1, we
cannot find the arguments directed to independent claim 1 persuasive with
respect to independent claim 13. Therefore, we will sustain the rejection of
independent claim 13.
35 U.S.C. § 103
At the outset, we note that to reach a proper conclusion under § 103,
the Examiner, as finder of fact, must step backward in time and into the
mind of a person of ordinary skill in the art at a time when the invention was
unknown, and just before it was made. In light of all the evidence, we
review the specific factual determinations of the Examiner to ascertain
whether the Examiner has convincingly established that the claimed
invention as a whole would have been obvious at the time of the invention to
a person of ordinary skill in the art. When claim elements are found in more
than one prior art reference, the fact finder must determine “whether a
person of ordinary skill in the art, possessed with the understandings and
knowledge reflected in the prior art, and motivated by the general problem
facing the inventor, would have been led to make the combination recited in
the claims.” In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1337 (Fed.
Cir. 2006). With respect to the role of the Examiner as finder of fact, the
Court of Appeals for the Federal Circuit has stated: “the examiner bears the
initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). The Court of Appeals
for the Federal Circuit has also noted: “[w]hat the prior art teaches, whether
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