Appeal No. 1996-1877
Application No. 08/149,716
Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444 ("An observation
by the Board that the examiner made a prima facie case is not
improper, as long as the ultimate determination of
patentability is made on the entire record."); In re Piasecki,
745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
Whether the evidence presented suffices to rebut the prima
facie case is part of the ultimate conclusion of obviousness.
When a rejection depends on a combination of prior art
references, there must be some teaching, suggestion, or
motivation to combine the references. See In re Geiger, 815
F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987). Although
the suggestion to combine references may flow from the nature
of the problem, see Pro-Mold & Tool Co. v. Great Lakes
Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed.
Cir. 1996), the suggestion more often comes from the teachings
of the pertinent references, see In re Sernaker, 702 F.2d 989,
994, 217 USPQ 1, 5 (Fed. Cir. 1983), or from the ordinary
knowledge of those skilled in the art that certain references
are of special importance in a particular field, see Pro-Mold,
75 F.3d at 1573, 37 USPQ2d at 1630 (citing Ashland Oil, Inc.
7
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