Appeal No. 1996-2644
Application 08/232,565
Discussion
The rejection under 35 U.S.C. § 103
It is the initial burden of the patent examiner to establish that claims
presented in an application for patent are unpatentable. In re Oetiker, 977 F.2d 1443,
1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992). We have carefully considered the
evidence and discussion in support of the rejection presented by the examiner. However,
a fair evaluation of the references, applicants' specification and consideration of the
claimed subject matter as a whole, dictates a conclusion that arriving at the claimed
system from the prior art teachings is not suggested by the record before us. To the extent
that the prior art relied upon by the examiner establishes that the individual components of
the claimed sealed system of claim 1 are old, we find no reason, suggestion, or direction,
in the prior art, to combine the references in a manner to arrive at the claimed invention.
To establish a prima facie case of obviousness, there must be more than the
demonstrated existence of all of the components. There must be some reason or
suggestion found in the prior art whereby a person of ordinary skill in the field of the
invention would be led to combine the teachings of the prior art to arrive at the claimed
invention. That knowledge cannot come from the applicants' invention itself. Diversitech
Corp. v. Century Steps, Inc., 850 F.2d 675, 678-79,
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