Appeal No. 1998-2107
Application No. 08/137,624
Examining Procedure § 706.02(j) (7th ed., Rev. 1, Feb. 2000):
[T]he examiner should set forth in the Office action:
(A) the relevant teachings of the prior art relied upon,
preferably with reference to the relevant column or page
number(s) and line number(s) where appropriate,
(B) the difference or differences in the claim over the applied
reference(s),
(C) the proposed modification of the applied reference(s)
necessary to arrive at the claimed subject matter, and
(D) an explanation why one of ordinary skill in the art at the time
the invention was made would have been motivated to
make the proposed modification.
To establish a prima facie case of obviousness, three basic
criteria must be met. First, there must be some suggestion or
motivation, either in the references themselves or in the knowledge
generally available to one of ordinary skill in the art, to modify the
reference or to combine reference teachings. Second, there must be
a reasonable expectation of success. Finally, the prior art reference
(or references when combined) must teach or suggest all the claim
limitations.
On the record before us, we find no suggestion or motivation to modify the
teachings of the reference relied upon by the examiner in a manner which would
have reasonably led one of ordinary skill in this art to arrive at the claimed invention.
Therefore, the examiner failed to provide the evidence necessary to support a prima
facie case of obviousness. Where the examiner fails to establish a prima facie
case, the rejection is improper and will be overturned. In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Accordingly, we reverse the rejection of claims 30-37 under 35 U.S.C. § 103
as being unpatentable over Morrison.
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