Appeal 2007-1902
Application 09/398,006
We consider the record in light of Appellants’ contentions but are not
persuaded of error in the Examiner’s position. We do not agree with
Appellants that the mere absence of an illustrative example in Farnsworth
falling within the claims would have led one of ordinary skill away from the
claimed invention. In this respect, we point out that the absence in
Farnsworth of an example illustrating a particular belt assembly embodiment
does not detract from the clear suggestion of that embodiment in the
reference to one of ordinary skill in this art. See, e.g., In re Lamberti, 545
F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976) (“The fact that neither of
the references expressly discloses asymmetric dialkyl moieties is not
controlling; the question under 35 U.S.C. § 103 is not merely what the
references expressly teach, but what they would have suggested to one of
ordinary skill in the art at the time the claimed invention was made.”).
Indeed, we do not find in Appellants’ contentions any explanation or
evidence establishing that the absence of an illustrative embodiment in
Farnsworth falling within the claims would have taught away from the
claimed pneumatic radial tires encompassed by claims 1 5, and 24. See, e.g.,
Kahn, 441 F.3d at 985-89, 78 USPQ2d at 1334-38 (“A reference may be
said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.” (quoting In re Gurley, 27 F.3d 551, 553 [31
USPQ2d 1130, 1131], (Fed. Cir. 1994))); In re Fulton, 391 F.3d 1195, 1201,
73 USPQ2d 1141, 1145-46 (Fed. Cir. 2004) (prior art “disclosure does not
criticize, discredit, or otherwise discourage the solution claimed”).
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