Appeal No. 2002-2057
Application No. 09/351,147
reasonable expectation of success must be founded in the prior
art, not in applicants’ disclosure. Id.
Here, the examiner has not identified the requisite
specific motivation, suggestion, or teaching that would have led
one of ordinary skill in the art to combine the two references
in the manner as proposed by the examiner. In re Dembiczak, 175
F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)(“T]he best
defense against the subtle but powerful attraction of a
hindsight-based obviousness analysis is rigorous application of
the requirement for a showing of the teaching or motivation to
combine prior art references.”); In re Rouffet, 149 F.3d 1350,
1359, 47 USPQ2d 1453, 1459 (Fed. Cir. 1998)(“T]he Board must
explain the reasons one of ordinary skill in the art would have
been motivated to select the references and to combine them to
render the claimed invention obvious.”); In re Warner, 397 F.2d
1011, 1016, 154 USPQ 173, 177 (CCPA 1967)(“W]here the invention
sought to be patented resides in a combination of old elements,
the proper inquiry is whether bringing them together was obvious
and not, whether one of ordinary skill, having the invention
before him, would find it obvious through hindsight to construct
the invention from elements of the prior art.”).
Accordingly, we cannot affirm this rejection.
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