Appeal No. 1997-3338
Application No. 08/402,252
patentability of the whole claimed invention. See
id. Rather, to establish obviousness based on a
combination of the elements disclosed in the prior
art, there must be some motivation, suggestion or
teaching of the desirability of making the specific
combination that was made by the applicant. See In
re Dance, 160 F.3d 1339, 1343, 48 USPQ2d 1635, 1637
(Fed. Cir. 1998); In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). [Underscoring
added.]
Here, for the reasons set forth by the appellants (appeal
brief, page 6), we conclude that the examiner has not
identified any motivation, suggestion or teaching of the
desirability of combining Koyanagi or Scovell with Tsang,
Shappir, Lee, Sun, and Sandhu to arrive at the appellants’
claimed invention. 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)).
For these reasons, we reverse the examiner’s (1)
rejection of claims 4 and 8 under 35 U.S.C. § 103 as
7
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