Appeal No. 1997-1379
Application 08/194,748
that suggests the claimed combination."). Here, the Examiner
has not identified what knowledge one of ordinary skill in the
art would have had that would have motivated him or her to
combine the references in the manner suggested by the
rejection. Absent such evidence, we infer that the Examiner
selected these references with the assistance of hindsight.
The Examiner further states that "an examiner's
obviousness rejection which relies on a combination of
references individually showing the various elements of a
claimed invention without any express or implicit suggestion
to do so is sufficient if it includes a convincing line of
reasoning as to why an artisan would have found it obvious to
choose the elements from the references to arrive at the
claimed invention" (EA7-8). While a convincing line of
reasoning is always necessary for an obviousness rejection,
merely inventing a plausible explanation why a modification or
combination would have been made is not sufficient.
Obviousness is determined by an objective standard and must be
based on evidence in the record, either in the prior art or in
findings by the examiner, so that it can be reviewed. See
Dembiczak, 175 F.3d at 999, 50 USPQ2d at 1617.
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