Appeal No. 94-0995
Application No. 07/662,722
§ 103 as unpatentable over the combined disclosures of Grape,
Favre, and Blizzard (Answer, page 3, last paragraph); and (2)
claims 1 through 14 under 35 U.S.C. § 103 as unpatentable over
"JP 53-130752A" (Answer, page 7, first paragraph). We shall
address these rejections in turn.
The Rejection Based on Grape, Favre, and Blizzard
As stated in Pro-Mold and Tool Co. v. Great Lakes Inc.,
75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996):
It is well-established that before a conclusion of
obviousness may be made based on a combination of
references, there must have been a reason,
suggestion, or motivation to lead an inventor to
combine those references.
Likewise, in the more recent opinion of In re Rouffet, 149
F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998), the
court stated that:
When a rejection depends on a combination of prior
art references, there must be some teaching,
suggestion, or motivation to combine the references.
Having carefully reviewed the Examiner's Answer, we agree with
appellants that the examiner has not established adequate
reason, suggestion, or motivation which would have led a
person having ordinary skill in the art to modify the Grape
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