Appeal No. 1998-0630
Application 08/231,655
1443, 1444 (Fed. Cir. 1992). Furthermore, when a rejection depends, as it does in the instant case on
appeal, on a combination of prior art references, the PTO must show that there is some teaching,
suggestion, or motivation to combine references. In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988); 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 modification." In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d
1780, 1783-84 n.14 (Fed. Cir. 1992)(citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984)). "Obviousness may not be established using hindsight or in view of the
teachings or suggestions of the inventor." Para-Ordnance Mfg. v. SGS Importers Int’l, Inc., 73 F.3d
1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995)(citing W. L. Gore & Assocs., Inc. v. Garlock,
Inc., 721 F.2d 1540, 1551, 1553, 220 USPQ 303, 311, 312-13 (Fed. Cir. 1983)).
We find that the examiner, at pages 2 to 8 of the Answer, has not met his burden of establishing
a prima facie case of obviousness. The examiner has failed to establish a factual basis to support the
legal conclusion of obviousness. In particular, the examiner has failed to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966),
and the examiner has failed to provide a reason why one having ordinary skill in the pertinent art would
have been led to modify Scannell or to combine Scannell, Sheth, Yourick, and Chang to arrive at the
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