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. - 4 -Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 NextLast modified: November 3, 2007