Appeal 2007-0757
Application 09/952,249
OPINION
In reaching our decision in this appeal, we have given careful
consideration to Appellants’ Specification and claims, to the applied prior art
references, and to the respective positions articulated by Appellants and the
Examiner. As a consequence of our review, we make the determinations
that follow.
One of Appellants’ primary contentions throughout the Brief is that
the Examiner has supplemented the rejection by responding to the arguments
in the responsive arguments section rather than modifying the text of the
rejection. Therefore, Appellants request that the appeal be remanded to the
Examiner and require the Examiner to properly articulate the rejections of
record. We have no jurisdiction to force the Examiner to place the work
product into Appellants’ desired format. If Appellants desired such action,
then Appellants should have petitioned to the Director. Rather than remand
the appeal, we shall decide the case on the merits.
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
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