Appeal No. 1997-3279 Page 10
Application No. 08/240,702
prior art so that the claimed invention is rendered obvious.”
In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed.
Cir. 1992) (citing In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984)).
Here, the examiner fails to identify a sufficient
suggestion to combine Doemen with Suzuki. Rather than
providing a line of reasoning that explains why such a
combination would have been desirable, he opines, "no
inventive step is applied in such a combination." (Examiner's
Answer at 6.) The examiner's opinion is conclusory and
unsupported by facts.
In view of the examiner’s conclusory opinion, we are not
persuaded that the prior art would have suggested the
desirability, and thus the obviousness, of combining Doemen’s
teaching with that of Suzuki. The examiner’s opinion
impermissibly relies on the appellants' teachings or
suggestions to piece together the teachings of the prior art.
He fails to establish a prima facie case of obviousness.
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