Appeal No. 2005-2753
Application No. 09/730,238
clearly suggested in the prior art and appellant has not alleged any particular error in our
rationale in the request for rehearing.
This is “clear and particular evidence of a suggestion” to make the proposed
combination of Herwig and Flannery. Yet, appellant has pointed to nothing in the request for
rehearing tending to negate our reasoning. If appellant has some basis for making this
allegation of non-combinability, then appellant should have specifically indicated where such
a basis is found.
It would appear from appellant’s general allegations of nonobviousness that perhaps
appellant requires that each and every claimed element be specifically taught by the
references, along with a specific teaching in the references for making a proposed
combination before permitting such a combination. If so, that is not the test for obviousness,
within the meaning of 35 U.S.C. § 103.
To reach a non-hindsight driven conclusion as to whether a person having ordinary
skill in the art at the time of the invention would have viewed the subject matter as a whole
to have been obvious in view of multiple references, the Board must provide some rationale,
articulation, or reasoned basis to explain why the conclusion of obviousness is correct, based
on evidence of record. The requirement of such an explanation is consistent with governing
obviousness law. In re Kahn, 441 F.3d at 987, 78 USPQ 2d at 1336.
We believe we have provided such “rationale, articulation, or reasoned basis” at
pages 7-14 of our opinion, as well as in our elucidation of that reasoned basis supra.
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