Appeal No. 1998-0160
Application No. 08/529,330
OPINION
The rejections
The examiner’s rejections of the claims are set forth principally on pages 3 through
6 of the Final Rejection. We refer to the examiner’s findings with regard to the differences
between the claims and the prior art, and further to the findings which point out what the
references teach. We cannot agree, however, with the implication that a conclusion of
obviousness necessarily follows from the recognition that claimed individual elements are
“conventional” or “well known.” A combination may be patentable whether composed of
elements all new, partly new, or all old. Rosemount, Inc. v. Beckman Instruments, Inc., 727
F.2d 1540, 1546, 221 USPQ 1, 7 (Fed. Cir. 1984). Prior art references in combination do
not make an invention obvious unless something in the prior art would suggest the
advantage to be derived from combining their teachings. In re Sernaker, 702 F.2d 989,
995-96, 217 USPQ 1, 6-7 (Fed. Cir. 1983). Our reviewing court requires rigorous
application of the requirement for a showing of the teaching or motivation to combine prior
art references. See, e.g., In re Dembiczak, 175 F.3d 994, 998-99, 50 USPQ2d 1614,
1616-17 (Fed. Cir. 1999).
The examiner bears the initial burden of presenting a prima facie case of
unpatentability. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
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