from Ex parte LIVERSIDGE
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument.
We select claim 1 as representative of the claims subject to this ground of rejection. See 37 C.F.R. § 41.37(c)(1)(vii).
First, none of the disclosures in Arbuthnot identified by Appellants specifically disparage the smaller particle sizes recited in claim 1. While page 15 of Arbuthnot states that the preferred particle size range of 5 to 20 microns was arrived at through testing and data described previously in the reference, Appellants do not direct us to, nor do we see, any disclosure in Arbuthnot where particles within the size range of Appellants’ claim 1 were tested and/or specifically rejected as being unsuitable. Compare DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference does not teach away . . . if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.”) (citing In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Second, it is well settled that Arbuthnot’s teachings must be viewed in light of Liversidge. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a combination of references. . . . [The reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole.”).
Thus, as the Supreme Court explained in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007), “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”