Appeal No. 1997-4423
Application No. 08/355,009
OPINION
The guidance provided by our reviewing court with regard
to the issue of evaluating the obviousness of the claimed
subject matter in view of the prior art is as follows: The
initial burden of establishing a basis for denying
patentability to a claimed invention rests upon the examiner.
See In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984). The question under 35 U.S.C. § 103 is not
merely what the references expressly teach but what they would
have suggested to one of ordinary skill in the art at the time
the invention was made. See Merck & Co. v. Biocraft Labs.,
Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir.),
cert. denied, 493 U.S. 975 (1989) and In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981). While there must be
some suggestion or motivation for one of ordinary skill in the
art to combine the teachings of references, it is not
necessary that such be found within the four corners of the
references themselves, for a conclusion of obviousness may be
made from common knowledge and common sense of the person of
ordinary skill in the art without any specific hint or
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