Appeal No. 1996-3860
Application 08/312,819
elements of the claims he believed were described in the various references, followed by a
pro forma statement of what would have been obvious to a person of ordinary skill in the
art. What has been missing from the examiner’s analysis under 35 U.S.C. 103 throughout
this case is the concept that the examiner must explain why it would have been obvious to
this hypothetical person to combine the identified teachings so as to arrive at the “subject
matter as a whole.” As stated in Pro Mold and Tool Co., v. Great Lakes Plastics Inc., 75
F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996):
It is well-established that before a conclusion of obviousness may be made
based on a combination of references, there must have been a reason,
suggestion, or motivation to lead an inventor to combine those references.
(citation omitted)
Here the only reference to this requirement set forth in the Examiner’s Answer is
contained in the single sentence which spans pages 7-11 of the answer. This sentence is
so jumbled and confusing that it is not susceptible to meaningful review. While the
examiner is correct in observing that Talbot indicates that the method described therein is
useful for wrapping “articles” broadly, that does not give the examiner license to
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