Appeal No. 1998-0240
Application 08/522,479
incorporate the amount of nucleating agent taught by Connor in the first and/or second component
filaments to improve the bonding of the filament.
It is well settled that to establish a prima facie case of obviousness, the prior art reference (or
references when combined) must teach or suggest all the claim limitations. See In re Wilson, 424 F.2d
1382, 1385, 165 USPQ 494, 496 (CCPA 1970) (“All words in a claim must be considered in judging
the patentability of that claim against the prior art.”). Furthermore, any motivation to modify the prior
art references must flow from some teaching in the art that suggests the desirability or incentive to make
the modification needed to arrive at the claimed invention. In re Napier, 55 F.3d 610, 613, 34
USPQ2d 1782, 1784 (Fed Cir. 1995); In re Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885, 1888,
(Fed. Cir. 1991)(“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 applicant.
[Citations omitted] ... The extent to which such suggestion must be explicit in, or may be fairly inferred
from, the references, is decided on the facts of each case in the light of the prior art and its relationship
to the applicants’ invention.”).
As urged by appellant, we conclude that the examiner has failed to establish a prima facie case
of obviousness as to claims 5 and 9-12 over Pike in view of Connor. As described by appellant, the
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