Appeal No. 1999-0212
Application No. 08/230,526
final rejection (Paper No. 19) and the Answer (Paper No. 22)
for the reasoning in support of the rejections, and to the
Appellants’ Brief (Paper No. 21), for the arguments
thereagainst.
The guidance provided us by our reviewing court for
evaluating the issue of obviousness is as follows: The
initial burden of establishing a basis for denying
patentability to a claimed invention rests upon the examiner.
See In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984). 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. v. Biocraft Labs.,
Inc., 874 F.2d 804, 807,
10 USPQ2d 1843, 1846 (Fed. Cir.), cert. denied, 493 U.S. 975
(1989) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). While there must be some suggestion or
motivation for one of ordinary skill in the art to combine the
teachings of references, it is not necessary that such be
found within the four corners of the references themselves; a
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