Appeal No. 96-3906
Application No. 08/038,588
prior art suggests the desirability of the proposed
modification
of Austin's method.
The Patent and Trademark Office has the burden under
35 U.S.C. § 103 to establish a prima facie case of
obviousness. It can satisfy this burden only by showing some
objective teaching in the prior art or that knowledge
generally available to one of ordinary skill in the art would
lead that individual to combine the relevant teachings of the
references. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988). The examiner has not satisfied that
burden here. On this record, the examiner has not established
that there is adequate suggestion or incentive stemming from
the prior art which would have led a person having ordinary
skill to combine the references in the manner proposed.
Rather, the examiner has engaged in a hindsight reconstruction
of the claimed invention, using appellants' disclosure as a
template and selecting elements from references to fill the
gaps. In re Gorman, 933 F.2d 982, 987, 18 USPQ2d 1885, 1888
(Fed. Cir. 1991). The rejection under 35 U.S.C. § 103 is
reversed.
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