Appeal No. 1998-1063
Application 08/715,239
clarity to those skilled in the art that, as of the filing date sought, [applicant] was in possession of the
invention . . . now claimed.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d
1111, 1117 (Fed. Cir. 1991); see also In re Alton, 76 F.3d 1168, 1175-76, 37 USPQ2d 1578,
1583-84 (Fed. Cir. 1996), citing In re Wertheim, 541 F.2d 257, 263, 191 USPQ 90, 97 (CCPA
1976).
In similar manner, the examiner has also not made out a prima facie case of obviousness under
§ 103(a) by showing that some objective teaching, suggestion or motivation in the applied prior art
taken as a whole and/or knowledge generally available to one of ordinary skill in the art would have led
that person to the claimed invention as a whole, including each and every limitation of the claims, without
recourse to the teachings in appellant’s disclosure. See generally, B.F. Goodrich Co. v. Aircraft
Braking Sys. Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318 (Fed. Cir. 1996) (“When
obviousness is based on a particular prior art reference, there must be a showing of a suggestion or
motivation to modify the teachings of that reference. [Citation omitted.] This suggestion or motivation
need not be expressly stated. [Citation omitted.]”); In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600
(Fed. Cir. 1988); In re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir.
1988). Indeed, the examiner has relied on the disclosure of a plurality of individual fuses linked
together on one substrate as disclosed in the reference (answer, page 5), and has not shown that some
objective teaching, suggestion or motivation in the knowledge generally available to one of ordinary skill
in this art would have led that person to a plurality of fusible elements in the same fuse.
The examiner’s decision is reversed.
Reversed
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