Appeal No. 95-1390
Application 07/752,639
35 U.S.C. §103 set forth on pages 5-9 of the Examiner's Answer is not susceptible to a
meaningful review.
As indicated above, the examiner relies upon twelve documents as evidence of
obviousness. In stating the rejection, the examiner briefly describes each of the twelve
references in one or two sentences. Beginning at the bottom of page 7 and continuing to
the top of page 9 of the Examiner's Answer, the examiner makes a series of conclusions
concerning what would have been obvious to one of ordinary skill in the art. Lacking from
this portion of the statement of the rejection is a reference to any individual claim on
appeal. Also, lacking is an explanation of why the references provide the requisite
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teaching, suggestion or motivation to one of ordinary skill in the art to combine their
disclosures in the manner needed in order to arrive at the subject matter of any individual
claim.
It is the examiner's initial burden to establish reasons of unpatentability. In re
Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992). Absent a
more fact based explanation by the examiner as to why the subject matter of any
individual claim on appeal would have been obvious to one of ordinary skill in the art,
we are constrained to reverse the rejection.
2As stated in Pro Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d
1626, 1629 (Fed. Cir. 1996) (citations omitted):
It is well-established that before a conclusion of obviousness may be made based on a
combination of references, there must have been a reason, suggestion, or motivation to
lead an inventor to combine those references.
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