Appeal No. 97-0695
Application No. 08/273,466
The obviousness issue
The test for obviousness is what the combined teachings
of the applied prior art would have suggested to one of
ordinary skill in the art. See In re Young, 927 F.2d 588,
591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller,
642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In
rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that the
reference teachings would appear to be sufficient for one of
ordinary skill in the relevant art to make the modifications
necessary to arrive at the claimed invention. See In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988) and In re Lintner, 9 F.2d 1013, 1016, 173 USPQ 560, 562
(CCPA 1972). Rejections based on § 103 must rest on a
factual basis with these facts being interpreted without
hindsight reconstruction of the invention from the prior art.
The examiner may not, because of doubt that the invention is
patentable, resort to speculation, unfounded assumption or
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