Ex parte ANDERSON et al. - Page 4




              Appeal No. 1998-0160                                                                                      
              Application No. 08/529,330                                                                                




                                                       OPINION                                                          
              The rejections                                                                                            
                     The examiner’s rejections of the claims are set forth principally on pages 3 through               
              6 of the Final Rejection.  We refer to the examiner’s findings with regard to the differences             
              between the claims and the prior art, and further to the findings which point out what the                
              references teach.  We cannot agree, however, with the implication that a conclusion of                    
              obviousness necessarily follows from the recognition that claimed individual elements are                 
              “conventional” or “well known.”  A combination may be patentable whether composed of                      
              elements all new, partly new, or all old.  Rosemount, Inc. v. Beckman Instruments, Inc., 727              
              F.2d 1540, 1546, 221 USPQ 1, 7 (Fed. Cir. 1984).  Prior art references in combination do                  
              not make an invention obvious unless something in the prior art would suggest the                         
              advantage to be derived from combining their teachings.  In re Sernaker, 702 F.2d 989,                    
              995-96, 217 USPQ 1, 6-7 (Fed. Cir. 1983).  Our reviewing court requires rigorous                          
              application of the requirement for a showing of the teaching or motivation to combine prior               
              art references.  See, e.g., In re Dembiczak, 175 F.3d 994, 998-99, 50 USPQ2d 1614,                        
              1616-17 (Fed. Cir. 1999).                                                                                 
                     The examiner bears the initial burden of presenting a prima facie case of                          
              unpatentability.  In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.                     


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