Appeal 2007-2677
Application 10/622,229
also a person of ordinary creativity, not an automaton. KSR, 127 S. Ct. at
1742, 82 USPQ2d at 1397.
The question under 35 U.S.C. § 103 is not merely what the references
teach but what they would have suggested to one of ordinary skill in the art
at the time the invention was made. All disclosures of the prior art,
including unpreferred embodiments, must be considered. In re Lamberti,
545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976).
A rejection premised upon a proper combination of references cannot
be overcome by attacking the references individually. In re Keller, 642 F.2d
413, 426, 208 USPQ 871, 882 (CCPA 1981).
It is well-settled that where the difference between the claimed
invention and the prior art is an overlapping range, the Appellants must
show that the particular range is critical by evidence of unexpected results.
In re Wertheim, 541 F.2d 257, 267, 191 USPQ 90, 100 (CCPA 1976); In re
Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
A showing of “unexpected results” must establish that the difference
actually obtained would not have been expected by one skilled in the art. In
re Freeman, 474 F.2d 1318, 1324, 177 USPQ 139, 143 (CCPA 1973).
Likewise, the difference must be shown to be significant. In re D’Ancicco,
439 F.2d 1244, 1248, 169 USPQ 303, 306 (CCPA 1971).
Nothing in the rules or in jurisprudence requires the fact finder to
credit unsupported or conclusory assertions. Rohm and Haas Co. v. Brotech
Corp., 127 F.3d 1089, 1092, 44 USPQ2d 1459, 1462 (Fed. Cir. 1997).
E. ANALYSIS
1. Rejection based on Darsillo
10
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: September 9, 2013