Appeal No. 1998-1798 Page 8
Application No. 08/596,538
We will not sustain the rejection of claims 1 to 9, 17,
19 and 20 under 35 U.S.C. § 103.
In rejecting claims under 35 U.S.C. § 103, 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). A prima facie case of
obviousness 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)). In
considering the question of the obviousness of the claimed
invention in view of the prior art relied upon, we are guided
by the basic principle that the question under 35 U.S.C. § 103
is not merely what the references expressly teach but what
they would have suggested to one of ordinary skill in the art
at the time the invention was made. See Merck & Co., Inc. v.
Biocraft Laboratories, Inc., 874 F.2d 804, 807, 10 USPQ2d
1843, 1846 (Fed. Cir. 1989) and In re Keller, 642 F.2d 413,
425, 208 USPQ 871, 881 (CCPA 1981). When it is necessary to
select elements of various teachings in order to form the
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