Appeal No. 2004-0050
Application No. 09/692,641
OPINION
We reverse the aforementioned rejections. We need to address only the
independent claims, i.e., claims 1 and 10. In rejecting the subject matter of claims 1
and 10, the Examiner’s relies on the combination of Koole and Burns. Therefore, we
will limit our discussion to these references.
To hold an invention obvious in view of a combination of references, there
must be some suggestion, motivation, or teaching in the prior art that would have led a
person of ordinary skill in the art to select the reference teachings and combine them
in a way that would produce the claimed invention. See, e.g., Heidelberger
Druckmaschinen AG v. Hantscho Commercial Prods., Inc., 21 F.3d 1068, 1072, 30
USPQ2d 1377, 1379 (Fed. Cir. 1994) (When the patent invention is made by
combining known components to achieve a new system, the prior art must provide a
suggestion, or motivation to make such a combination.); Northern Telecom v.
Datapoint Corp., 908 F.2d 931, 934, 15 USPQ2d 1321, 1323 (Fed. Cir. 1990) (It is
insufficient to establish a prima facie case of obviousness based on prior art
references disclosing the components of a patented device, either separately or used in
other combinations; there must be some teaching, suggestion, or incentive to make the
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