Appeal No. 97-3000
Application 08/370,867
re Kuhle, 526 F.2d 553, 555, 188 USPQ 7, 9 (CCPA 1975)) by
attempting to apply this legal precedent to the claimed invention
instead of to the prior art photographic display of Lyman. It is
well settled that for the Patent and Trademark Office (PTO) to
establish a case for obviousness in the first instance, it is
necessary for the examiner to ascertain whether or not the
reference teachings of the applied prior art would appear to be
sufficient for one of ordinary skill in the relevant art having
the references before him to make the proposed substitution,
combination, or other modification. See, e.g., In re Lalu,
747 F.2d 703, 705, 223 USPQ 1257, 1258 (Fed. Cir. 1984). Stated
another way, obviousness can only be established by combining or
modifying the teachings of the prior art to produce the claimed
invention where there is some teaching, suggestion, or motivation
to do so found either in the references themselves or in the
knowledge generally available to one of ordinary skill in the
art at the time of appellant's invention. See, e.g., In re Fine,
837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988);
Ashland Oil, Inc. v. Delta Resins and Refractories, Inc.,
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