Appeal No. 1999-1408 Page 3
Application No. 08/809/629
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
Both of the rejections are under 35 U.S.C. § 103. It is worthy, at the outset, to set
forth the guidance provided by our reviewing court for evaluating a rejection under 35
U.S.C. § 103. A prima facie case of obviousness is established when the teachings of the
prior art itself would appear to have suggested the claimed subject matter to one of
ordinary skill in the art (see In re Bell, 991 F.2d 781, 782, 26 USPQ2d 1529, 1531 (Fed.
Cir. 1993)). This is not to say, however, that the claimed invention must expressly be
suggested in any one or all of the references, rather, the test for obviousness is what the
combined teachings of the references would have suggested to one of ordinary skill in the
art (see, for example, Cable Elec. Prods. v. Genmark, 770 F.2d 1015, 1025,
226 USPQ 881, 886-87 (Fed. Cir. 1985)), considering that a conclusion of obviousness
may be made from common knowledge and common sense of the person of ordinary skill
in the art without any specific hint or suggestion in a particular reference (see In re Bozak,
416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969)). Insofar as the references
themselves are concerned, we are bound to consider the disclosure of each for what it
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