Appeal No. 1996-3675
Application No. 08/259,933
Examiner suggests because exposure of the internal
half cell 32 to water would defeat the purpose of
the Watanabe invention. The unsupported position
taken by the Examiner is contrary to the specific
teaching of Watanabe, Watanabe, when considered as a
whole, does not supply any motivation to incorporate
multiple holes into the reference electrode, and
specifically teaches away from the structure
suggested by the Examiner. Some teaching or
suggestion in the references must exist to support
their use of the particular applied combination. In
combining Watanabe and Monter, the Examiner has
impermissibly selected only so much of these
references as necessary to support the Examiner’s
position. The Examiner has ignored the teachings of
these references which would lead one skilled in the
art away from making the suggested combination. The
suggested combination of elements of these
references, therefore, is improper. [Underscoring
added; appeal brief, pp. 11-12.]
We agree with the appellant that the examiner has not
supplied the requisite teaching or motivation to combine
Watanabe with Monter. Our reviewing court has made it clear
that “the best defense against the subtle but powerful
attraction of a hindsight-based obviousness analysis is
rigorous application of the requirement for a showing of the
teaching or motivation to combine prior art references.” In
re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed.
Cir. 1999) (citing C.R. Bard, Inc. v. M3 Sys., Inc., 157 F.3d
1340, 1352, 48 USPQ2d 1225, 1232 (Fed. Cir. 1998)).
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