Appeal No. 1999-2747
Application 08/757,979
As regards claims 2, 3, 11 and 12, we find that the
Examiner has failed to set forth a prima facie case. As we
stated above, it is the burden of the Examiner to establish
why one having ordinary skill in the art would have been led
to the claimed invention by the express teachings or
suggestions found in the prior art, or by implications
contained in such teachings or suggestions. We are not
inclined to dispense with proof by evidence when the
proposition at issue is not supported by a teaching in a prior
art reference or shown to be common knowledge of
unquestionable demonstration.
The Federal Circuit states that "[t]he mere fact that the
prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). "Obviousness may not be
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