Appeal No. 1997-3996
Application 08/519,952
level of skill in the particular art would not have suggested to one of ordinary skill in the art the
obviousness of the invention as set forth in claims 1 to 18. We also find that any conclusion of
obviousness of the invention recited in the claims on appeal would necessarily have involved the
improper use of hindsight.
In reaching our conclusion on the issues raised in this appeal, we have carefully considered
appellant’s specification and claims, the applied references, and the respective viewpoints of appellant
and the examiner. As a consequence of our review of the record before us, we find that the applied
prior art fails to teach or suggest the feature of representative claim 1 on appeal of a power source
circuit having an external clock oscillator synchronized with a triangle wave oscillator. Accordingly, we
will reverse the examiner’s decision rejecting claims 1 to 18 on appeal as being obvious under 35
U.S.C. § 103.
At the outset, we note that our reviewing court has held that the PTO has the burden to
establish a prima facie case of obviousness. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). And, when a rejection depends on a combination of prior art references, the PTO
must show that there is some teaching, suggestion, or motivation to combine references. Id.; see also In
re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987). The Federal Circuit has
stated that "[t]he mere fact that the prior art may be modified in the manner suggested by the Examiner
does not make the modification obvious unless the prior art suggested the desirability of the
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