Appeal No. 1997-3857
Application No. 08/220,286
The examiner is required to provide a reason from some
teaching, suggestion or implication in the prior art as a
whole, why one having ordinary skill in the pertinent art
would have been led to modify Shikama to arrive at the claimed
invention. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d
1044, 1052, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988), cert.
denied, 488 U.S. 825 (1988). These showings by the examiner
are an essential part of complying with the burden of
presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). The examiner's motivation for modifying Shikama in the
particular manner necessary to arrive at appellant's claimed
invention comes directly from appellant's specification (page
3, lines 3-6) and not from any teaching or suggestion in the
prior art. "Obviousness may not be established using
hindsight or in view of the teachings or suggestions of the
inventor." Para-Ordnance Mfg., Inc. v. SGS Importers Int’l,
Inc., 73 F.3d 1085, 37 USPQ2d 1237, 1241 (Fed. Cir. 1995),
citing W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1551, 1553, 220 USPQ 303, 311, 312-13 (Fed. Cir. 1983).
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