§ 103(a). The Office bears the initial burden of factually supporting any prima facie conclusion of obviousness. MPEP § 2142. Under § 103, the scope and content of the prior art are to be determined, differences between the prior art and the claims at issue are to be ascertained, and the level of ordinary skill in the pertinent art resolved. Section 2143.03 of the MPEP requires the “consideration” of every claim feature in an obviousness determination. To render the Applicant’s claims unpatentable, however, the Examiner must do more than merely “consider” each and every feature for these claims. Instead, the asserted combination of the references must also teach or suggest each and every claim feature. See, e.g., In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974) (emphasis added) (to establish prima facie obviousness of a claimed invention, all the claim features must be taught or suggested by the prior art). Indeed, as the Board of Patent Appeal and Interferences has confirmed, a proper obviousness determination requires that the Examiner make “a searching comparison of the claimed invention – including all its limitations – with the teaching of the prior art.” See In re Wada and Murphy, Appeal 2007-3733, citing In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995) (emphasis in original). Further, the necessary presence of all claim features is axiomatic, since the Supreme Court
§ 103(a). The Office bears the initial burden of factually supporting any prima facie conclusion of obviousness. MPEP § 2142. Under § 103, the scope and content of the prior art are to be determined, differences between the prior art and the claims at issue are to be ascertained, and the level of ordinary skill in the pertinent art resolved. Section 2143.03 of the MPEP requires the “consideration” of every claim feature in an obviousness determination. To render the Applicant’s claims unpatentable, however, the Examiner must do more than merely “consider” each and every feature for these claims. Instead, the asserted combination of the references must also teach or suggest each and every claim feature. See, e.g., In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974) (emphasis added) (to establish prima facie obviousness of a claimed invention, all the claim features must be taught or suggested by the prior art). Indeed, as the Board of Patent Appeal and Interferences has confirmed, a proper obviousness determination requires that the Examiner make “a searching comparison of the claimed invention – including all its limitations – with the teaching of the prior art.” See In re Wada and Murphy, Appeal 2007-3733, citing In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995) (emphasis in original). Further, the necessary presence of all claim features is axiomatic, since the Supreme Court