Thursday, July 25, 2013

Appellant loses in Ex parte STRZALKOWSKI


Of obviousness

As we noted in our Opinion, "[I]t is not necessary that the references be physically combinable to render obvious the invention under review." In re Sneed, 710 F.2d 1544, 1550 Fed. Cir. 1983 (citing Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983); In re Andersen, 391 F.2d 953, 958 (CCPA 1968)); see also In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) ("Combining the teachings of references does not involve an ability to combine their specific structures. "). The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413,425 (CCPA 1981) (citations omitted). We once again find that the combination of AAPA and Regan would have suggested the claimed invention to one of ordinary skill in the art.

As to invoking patentability determinations in other cases:

Further, it is well settled law that the fact that identical claims in the Chen patents had issued over the Regan reference is irrelevant to our decision here. “Each case is determined on its own merits. In reviewing specific rejections of specific claims, this court does not consider allowed claims in other applications or patents.” In re Gyurik, 596 F.2d 1012, 1017 (FN15), (CCPA 1979).


Post a Comment

<< Home