Appeal No. 97-0784
Application 08/174,648
We conclude that the Examiner has not established a prima
facie case of obviousness. It is true that there does not
need to be an express teaching in the prior art to make a
modification. See In re Oetiker, 977 F.2d 1443, 1447,
24 USPQ2d 1443, 1446 (Fed. Cir. 1992) (Nies, C.J., concurring)
("[T]he language that there must be some teaching, reason,
suggestion, or motivation "in the prior art" or "in the prior
art references" to make a combination to render an invention
obvious . . . if taken literally would mean that an invention
cannot be held to have been obvious unless something specific
in a prior art reference would lead an inventor to combine the
teachings therein with another piece of prior art. This
restrictive understanding of the concept of obviousness is
clearly wrong. . . ."); In re Jacoby, 309 F.2d 513, 516,
135 USPQ 317, 319 (CCPA 1962) (those of ordinary skill in the
art must be presumed to know something about the art apart
from what the references expressly disclose).
Nevertheless, as our reviewing court has stated: "[T]he
best defense against the subtle but powerful attraction of a
hindsight-based obviousness analysis is rigorous application
of the requirement for a showing of the teaching or motivation
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