Appeal 2007-2680
Application 10/756,352
We have considered all of Appellant’s arguments1 and are
unpersuaded for the reasons below.
Generally, one of ordinary skill in the art can look in the same or
different field of endeavor when combining prior art teachings. KSR Intl.
Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740, 82 USPQ2d 1385, 1396 (2007)
(stating “When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the
same field or a different one”). The field of endeavor is determined by
considering applicant’s full disclosure (e.g., written description and claims)
and weighing the full disclosure from the vantage point of the common
sense likely to be exerted by one of ordinary skill in the art in assessing the
scope of the endeavor. In re Bigio, 381 F.3d 1320, 1325-27, 72 USPQ2d
1209, 1212-13 (Fed. Cir. 2004). Moreover, “[i]f a reference disclosure has
the same purpose as the claimed invention, the reference relates to the same
problem, and that fact supports use of that reference in an obviousness
rejection.” In re Clay, 966 F.2d 656, 659, 23 USPQ2d 1058, 1061 (Fed. Cir.
1992).
Appellant claims a method of coating a calcium fluoride optical
element to form a peripheral coating on the optical element (claims 1 and
26). Appellant discloses that the “Field of Invention” is “. . . a method . . .
for forming a clear aperture on an optical element held in an optical system”
1 Appellant copies independent claims 1 and 26 and states that none of the
applied references, alone or in combination, teach or suggest the features of
claims 1 and 26. “A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim”
37 C.F.R. § 41.37(c)(1)(vii) (2006). In accordance with the aforementioned
rule, we have not treated Appellant’s mere copying of claims 1 and 26 in the
Brief as an argument.
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