Appeal No. 97-0784
Application 08/174,648
to combine prior art references. . . . Combining prior art
references without evidence of such a suggestion, teaching, or
motivation simply takes the inventor's disclosure as a
blueprint for piecing together the prior art to defeat
patentability--the essence of hindsight." In re Dembiczak,
175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999).
Evidence of a suggestion, teaching, or motivation to combine
may flow from the prior art references themselves, the
knowledge of one of ordinary skill in the art, or, in some
cases, from the nature of the problem to be solved. Id., 50
USPQ2d at 1617, citing Pro-Mold and Tool Co. v. Great Lakes
Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed.
Cir. 1996). "Even if obviousness of the variation is
predicated on the level of skill in the art, prior art
evidence is needed to show what that level of skill was."
In re Kaplan, 789 F.2d 1574, 1580, 229 USPQ 678, 683 (Fed.
Cir. 1986).
Here the Examiner admits that there is no teaching or
suggestion of the checking-before-resending limitation in the
references and the Examiner has offered no evidence of
knowledge of persons of ordinary skill in the art that the
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