Appeal 2007-1052
Application 10/329,906
Cir. 2006)). Such reasoning can be based on interrelated teachings of
multiple patents, the effects of demands known to the design community or
present in the marketplace, and the background knowledge possessed by a
person having ordinary skill in the art. KSR, 127 S. Ct. at 1740-41, 82
USPQ2d at 1396. Only if this initial burden is met does the burden of
coming forward with evidence or argument shift to the Appellant. Oetiker,
977 F.2d at 1445, 24 USPQ2d at 1444. See also Piasecki, 745 F.2d at 1472,
223 USPQ at 788. Thus, the Examiner must not only assure that the
requisite findings are made, based on evidence of record, but must also
explain the reasoning by which the findings are deemed to support the
Examiner’s conclusion.
ANALYSIS
A. 35 U.S.C. § 102(a) REJECTION
We begin our analysis by noting that the Court of Appeals for the
Federal Circuit has determined “[t]eaching away is irrelevant to
anticipation.” Seachange International, Inc., v. C-Cor, Inc., 413 F.3d 1361,
1380, 75 USPQ2d 1385, 1398 (Fed. Cir. 2005), citing Celeritas Tech., Ltd.,
v. Rockwell Int’l Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522 (Fed.
Cir. 1998); Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d
1368, 1378, 58 USPQ2d 1508, 1515 (Fed. Cir. 2001). Therefore,
Appellants’ reliance on the discussion of the technical barriers and safety
issues in Lansberry to show disincentives in the cited reference to supply
energy back into the grid is misplaced. Such arguments are therefore not
persuasive.
Next, we note that independent claims 1, 8, 18, and 27 require
combining power from various sources to inject an AC current into the
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