Appeal No. 1997-3897 Page 5
Application No. 08/458,930
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. It is
impermissible, however, simply to engage in a hindsight
reconstruction of the claimed invention, using the appellants'
structure as a template and selecting elements from references
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