Appeal No. 98-1261
Application 08/435,869
The first is French ‘008, German ‘312 and French ‘421, and the second is French
‘008, Mabuchi and French ‘312. We have evaluated this rejection on the basis of the following
guidelines provided by our reviewing court: The examiner bears the initial burden of presenting a prima
facie case of obviousness (see In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed.
Cir. 1993)), which is established when the teachings of the prior art itself would appear to have
suggested the claimed subject matter to one of ordinary skill in the art (see In re Bell, 991 F.2d 781,
783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993)). This is not to say, however, that the claimed
invention must expressly be suggested in any one or all of the references. Rather, the test for
obviousness is what the combined teachings of the references would have suggested to one of ordinary
skill in the art (see Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1025, 226
USPQ 881, 886-87 (Fed. Cir. 1985)), considering that a conclusion of obviousness may be made
from common knowledge and common sense of the person of ordinary skill in the art without any
specific hint or suggestion in a particular reference (see In re Bozek, 416 F.2d 1385, 1390, 163 USPQ
545, 549 (CCPA 1969)), with skill being presumed on the part of the artisan, rather than the lack
thereof (see In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985)). Insofar as the
references themselves are concerned, we are bound to consider the disclosure of each for what it fairly
teaches one of ordinary skill in the art, including not only the specific teachings, but also the inferences
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