Appeal No. 1997-1842
Application 08/068,878
Furthermore, the rejection is difficult to review since the examiner has failed to
state how one of ordinary skill in the art would have found the subject matter of any
claim on appeal as a whole obvious. Rather, we only have two statements from the
examiner as to what one of ordinary skill in the art purportedly would have been
“motivated” to do. We remind the examiner that the statutory standard under 35 U.S.C.
§ 103 is one of obviousness, not motivation. The word “motivation” is normally used in
the context of determining obviousness under section 103 when it becomes necessary
to combine reference disclosures as evidence that one of ordinary skill in the art would
have found the subject matter of a claim as a whole obvious within the meaning of the
statute. See, e.g., 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 con-
clusion 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.”)
Our review of this case leads us to conclude that there is evidence of record
which renders the claims on appeal unpatentable under 35 U.S.C. § 103. Rather than
spend the resources of the Board in an attempt to guess what was on the examiner’s
mind in making the rejection, we vacate the rejection and enter the following new
ground of rejection.
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