Ex parte KALISIAK et al. - Page 4



          Appeal No. 1997-0233                                       Page 4           
          Application No. 08/266,558                                                  


               In rejecting claims under 35 U.S.C. � 103, the examiner                
          bears the initial burden of presenting a prima facie case of                
          obviousness.  See In re Rijckaert, 9 F.3d 1531, 1532, 28                    
          USPQ2d 1955, 1956 (Fed. Cir. 1993).  A prima facie case of                  
          obviousness is established by presenting evidence that would                
          have led one of ordinary skill in the art to combine the                    
          relevant teachings of the references to arrive at the claimed               
          invention.  See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d                   
          1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013,               
          1016, 173 USPQ 560, 562 (CCPA 1972).  When it is necessary to               
          select elements of various teachings in order to form the                   
          claimed invention, we ascertain                                             
          whether there is any suggestion or motivation in the prior art              
          to make the selection made by the appellants.  Obviousness                  
          cannot be established by combining the teachings of the prior               
          art to produce the claimed invention, absent some teaching,                 
          suggestion or incentive supporting the combination.  The                    
          extent to which such suggestion must be explicit in, or may be              
          fairly inferred from, the references, is decided on the facts               
          of each case, in light of the prior art and its relationship                
          to the appellants' invention.  As in all determinations under               






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