Appeal No. 95-3338
Application 07/994,035
F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); In re
Piasecki, 745 F.2d 1468, 1471, 223 USPQ 785, 787-88 (Fed. Cir.
1984).
In rejecting claims under 35 U.S.C. 103, it is
incumbent upon the examiner to provide a reason why one having
ordinary skill in the art would have been led to modify the prior
art or to combine prior art references to arrive at the claimed
invention. Such reason must stem from some teaching, suggestion
or inference in the prior art as a whole or knowledge generally
available to one having ordinary skill in the art. Uniroyal,
Inc. v. Rudkin-Wiley, 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1439
(Fed. Cir. 1988); Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.d 281, 291, 227 USPQ 657, 662 (Fed.
Cir. 1985); ACS Hospital Systems, Inc. v. Montefiore Hospital,
732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984); In re
Sernaker, 702 F.2d 989, 994, 217 USPQ 1, 5 (Fed. Cir. 1983). It
is imperative for the decision maker to place himself back in
time to when the invention was unknown, i.e., without the
appellants' disclosure at his side, and determine, in light of
all the objective evidence bearing on the issue of obviousness,
whether one having ordinary skill in the art would have found the
claimed invention as a whole obvious under 35 U.S.C. 103. Panduit
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