Monday, May 13, 2013

Sovish is cited as to the skill of the artisan

from Ex parte Exner

“The fact that the motivating benefit comes at the expense of another benefit ... should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.” Medichem S.A. v. Rolabo S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).

Obviousness is determined in view of the sum of all of the relevant teachings in the art, not isolated teachings in the art. See In re Kuderna, 426 F.2d 385, 389 (CCPA 1970); see also In re Shuman, 361 F.2d 1008, 1012 (CCPA 1966). In assessing the teachings of the prior art references, the examiner should also consider those disclosures that may teach away from the invention. See In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997).


The law presumes skill on the part of the artisan rather than the converse. See In re Sovish, 769 F.2d 738, 742-43 (Fed. Cir. 1985). We agree with the Examiner that one of ordinary skill in the art reading Hogan in the context of Weidmann, Adelson, Draper and Dolan would have been readily able to design any number of primers or probes, including the claimed primers and probes. Appellant has provided no evidence that one of ordinary skill in the art following the combined teachings of Hogan, Weidman or Adelson, in particular, would not have been able to design or arrive at the claimed primers or probes given the specific target genes. Rejection 7 is affirmed for the reasons of record.


Post a Comment

<< Home