Appeal No. 1999-0545 Page 4
Application No. 08/606,068
blocks] of Ross by providing a heating means for his dam blocks in view of Wood et al.”
and to substitute an induction heater for the radiant heater disclosed by Wood in view of
Ross’ teaching that induction heaters offer advantages over radiant heaters. The
examiner’s alternative assertion is that it would have been obvious to use an induction
heater in the Wood apparatus in place of the disclosed radiant heater, in view of the Ross
teaching that this offers advantages. Where a rejection is predicated upon two references,
each containing pertinent disclosure which has been pointed out to the applicants, it is
merely a matter of exposition that the rejection is stated to be A in view of B instead of B in
view of A; such differing forms of expression do not constitute different grounds of
rejection. See In re Bush, 296 F.2d 491, 496, 131 USPQ 263, 267 (CCPA 1961). In light
of this principle, and in view of the examiner's alternative expressions of the rejection, we
have chosen to evaluate the rejection by treating it from the standpoint of Wood being the
primary reference.
The guidance provided by our reviewing court with regard to evaluating the issue of
obviousness under 35 U.S.C. § 103 is as follows. The initial burden of establishing a
basis for denying patentability to a claimed invention rests upon the examiner. See In re
Piasecki. 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984). The question under 35 U.S.C. §103 is not merely what the references expressly
teach but what they would have suggested to one of ordinary skill in the art at the time the
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