Appeal 2007-2807
Reexamination 90/006,511
Patent 5,156,811
ordinary skill in the art; and (4) any objective evidence of unobviousness,
Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966).
One with ordinary skill in the art is presumed to have skills apart from what
the prior art references explicitly say. See In re Sovish, 769 F.2d 738, 743,
226 USPQ 771, 774 (Fed. Cir. 1985). A person of ordinary skill in the art is
also a person of ordinary creativity, not an automaton. KSR International
Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1397 (2007).
A prima facie case means the evidence would reasonably allow the
Examiner’s conclusion and compels such a conclusion if the Applicant
produces no evidence to rebut it. In re Spada, 911 F.2d 705, 707 n.3, 15
USPQ2d, 1655, 1657 n.3 (Fed. Cir. 1990); RCA Corp. v. Applied Digital
Data Systems Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.
1984). The Patent and Trademark Office is not equipped to prove or
disprove any assertion by way of conducting experiments. In re King, 801
F.2d 1324, 1327, 231 USPQ 136, 139 (Fed. Cir. 1986). Once a prima facie
case of inherency has been established, however, the burden shifts to the
applicants to prove that the subject matter shown in the prior art does not
possess the characteristics relied on by the Examiner. Id.
The determination that a reference is from a nonanalogous art is a
two-fold analysis. If the reference is within the field of the inventor’s
endeavor, or if the reference is reasonably pertinent to the particular problem
with which the inventor was involved, it is not nonanalogous art. See In re
Deminski, 796 F.2d 436, 442, 230 USPQ 313, 315 (Fed. Cir. 1986).
In KSR International Co., 127 S. Ct. at 1742, 82 USPQ2d at 1397, with
regard to motivation to combine teachings, the Supreme Court stated:
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