Appeal No. 96-3368 Page 6
Application No. 07/735,020
shown by some objective teaching in the prior art or by knowledge generally available to
one of ordinary skill in the art that would have led that individual to combine the relevant
teachings of the references to arrive at the claimed invention. See In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
As pointed out by our reviewing court, we must first determine the scope of the
claim. "[T]he name of the game is the claim." In re Hiniker Co., 150 F.3d 1362, 1369, 47
USPQ2d 1523, 1529 (Fed. Cir. 1998). Similarly, the examiner must address the explicit
limitations set forth in the claim to set forth the prima facie case of lack of novelty or
obviousness.
After a careful review of the record in this case, we are compelled to agree with
appellant that the Examiner’s conclusion of obviousness is not supported by the types of
factual findings necessary to reach this conclusion. Our reading of the Examiner’s reasons
for the determination of obviousness causes us to conclude that the Examiner merely
believes the claimed invention to be obvious because is seems that it would have been
obvious. This is not the test upon which determinations of obviousness are to be made.
The Examiner has set forth merely general propositions concerning the prior art
teaching. These general propositions do not clearly address the limitations set forth in
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