Appeal No. 2002-1752
Application 09/180,464
In order to establish a prima facie case of
obviousness, the examiner must identify a suggestion or
motivation to modify the teachings of the cited references to
achieve the claimed invention. In re Kotzab, 217 F.3d 1365,
1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000). The evidence of
a suggestion, teaching or motivation to combine in an obviousness
determination may flow from the prior art references themselves,
the knowledge of one of ordinary skill in the art, or from the
nature of the problem to be solved. Pro-Mold & Tool Co. v. Great
Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630
(Fed. Cir. 1996).
Although the examiner provides several reasons why one
of ordinary skill in the art would have been motivated to modify
Reiso in view of the ASM Handbook to achieve the invention as
claimed, as pointed out by appellants, each of the examiner’s
reasons is based on an assumption which is not supported by the
prior art. In particular, the examiner’s rejection is predicated
on her conclusion that the discussion of “quenching” in the ASM
Handbook relates to a cooling step performed after reheating of
the workpiece to dissolve precipitated phases. See Examiner’s
Answer, page 10. However, the examiner fails to identify any
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