Appeal No. 95-5053
Application 08/048,188
on. Consequently, the examiner has failed to establish a
prima facie case of obviousness.
As recently stated by our reviewing court, the Court of
Appeals for the Federal Circuit in In re Dembiczak,
No. 98-1498 (Fed. Cir. April 28, 1999) (slip op. at 10): "Our
case law makes clear that the best defense against the subtle
but powerful attraction of hindsight-based obviousness
analysis is rigorous application of the requirement for a
showing of the teaching or motivation to combine prior art
references." A suggestion to combine or modify "may come
expressly from the references themselves. It may come from
knowledge of those skilled in the art that certain references,
or disclosures in the references, are known to be of special
interest or importance in the particular field. It may also
come from the nature of a problem to be solved, leading
inventors to look to references relating to possible solutions
to that problem." (Citations omitted.) Pro-Mold and Tool Co.
v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573,
37 USPQ2d 1626, 1630 (Fed. Cir. 1996). Of these three sources
of motivation (the nature of the problem to be solved,
teachings of the prior art, and the knowledge of persons of
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