Appeal No. 2005-0651
Application 09/826,486
Also, Appellant argues at page 7 of the brief, one of
ordinary skill in the art would not be motivated to modify
Hundt’s device in view of Hattori. Appellant argues that the
Examiner’s “sweeping statement regarding the desirability of
‘more integration,’ ‘lower costs,’ and ‘smaller chips’ in the
microprocessor industry in no way meets the Examiner’s burden of
‘present[ing] a convincing line of reasoning’ as to why the
modification would have been obvious.” Appellant also argues at
page 8 of the brief, “the Examiner’s rationale appears to be
nothing more than a thinly veiled use of impermissible
hindsight.” We find Appellant's argument unpersuasive.
The fact that a motivation is “sweeping” in no way impacts
the Examiner’s establishment of a prima facie case of
obviousness. Rather, to establish a prima facie case of
obviousness, the Examiner must show “some objective teaching in
the prior art or that knowledge generally available to one of
ordinary skill in the art would lead that individual to combine
the relevant teachings of the references.” In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). “The
motivation, suggestion or teaching may come explicitly from
statements in the prior art, the knowledge of one of ordinary
skill in the art, or, in some cases the nature of the problem to
be solved.” In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313,
7
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