Appeal No. 1998-0856
Application 08/486,022
It is well settled that "a prima facie case of obviousness is established when the teachings from
the prior art itself would appear to have suggested the claimed subject matter to a person of ordinary
skill in the art." In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993) (quoting In
re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976)). Yet, 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, 986-87, 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.”).
We concur with appellant that the combination of Schlar and LaBaw does not teach or suggest
the claimed subject matter. The fact that the Schlar reference can be combined or modified with
LaBaw does not render the resultant combination obvious unless the prior art also suggests the
desirability of the combination. In re Mills, 916 F.2d 680, 682, 16 USPQ2d 1430, 1432 (Fed. Cir.
1990). Yet, a review of the combined teachings of Schlar and LaBaw fails to provide such a
suggestion.
Page 6
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007