Appeal No. 2005-2753
Application No. 09/730,238
Appellant’s brief summarized the applicable law as follows (brief, pages 10-11):
A Federal Circuit opinion states that the suggestion or motivation to combine
references and the reasonable expectation of success must both be found in the prior
art. [Footnote 3 citing MPEP § 2143 and In re Vaeck omitted.]
Multiple Federal Circuit decisions emphasize the need for the PTO to furnish
evidence in support of claim rejections. For example, the Federal Circuit addressed
citation of “basic knowledge or common sense” in rejections in In re Zurko:
“With respect to core factual findings in a determination of patentability,
however, the Board [Board of Patent Appeals and Interferences] cannot
simply reach conclusions based on its own understanding or experience – or
on its assessment of what would be basic knowledge or common sense.
Rather, the Board must point to some concrete evidence in the record in
support of these findings.” [Footnote 4 to Zurko omitted.]
The Federal Circuit has particularly emphasized the need for the PTO to
furnish evidence in support of claim rejections under 35 U.S.C. § 103 in In re Lee:
“When patentability turns on the question of obviousness, the search for and
analysis of the prior art includes evidence relevant to the finding of whether
there is a teaching, motivation, or suggestion to select and combine the
references relied on as evidence of obviousness…..The factual inquiry
whether to combine references must be thorough and searching…..It must be
based on objective evidence of record.” [Footnote 5 to In re Lee omitted.]
The Federal Circuit stated that the “need for specificity pervades this
authority” requiring a teaching, motivation, or suggestion to select and combine
references. [Footnote 6 to In re Lee omitted.] The Federal Circuit has expressed this
need for specificity in several cases:
“[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…..the
showing must be clear and particular.” [Footnote 7 to In re Dembiczak
omitted.]
“[E]ven when the level of skill in the art is high, the Board must identify
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