Appeal No. 97-1025
Application No. 08/183,571
The obviousness issue
The test for obviousness is what the combined teachings of
the references 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 hindsight reconstruction to supply
deficiencies in the factual basis for the rejection. See In re
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