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 - 5 -Page: Previous 1 2 3 4 5 6 7 8 9 NextLast modified: November 3, 2007