Ex parte CLINE - Page 3



                 Appeal No. 1999-1082                                                                                 Page 3                     
                 Application No. 08/813,359                                                                                                      


                 reasoning in support of the rejections, and to the Brief (Paper No. 9) and Reply Brief                                          
                 (Paper No. 12) for the appellant's arguments thereagainst.                                                                      


                                                                  OPINION                                                                        
                         In reaching our decision in this appeal, we have given careful consideration to the                                     
                 appellant's specification and claims, the applied prior art references, the respective                                          
                 positions articulated by the appellant and the examiner, and the guidance provided by our                                       
                 reviewing court.  As a consequence of our review, we make the determinations which                                              
                 follow.                                                                                                                         
                         All three of the standing rejections are under 35 U.S.C. � 103.  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                                    
                 invention was made.  See Merck & Co. v. Biotech Labs., Inc. 874 F.2d 804, 10 USPQ2d                                             

                 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989) and In re Keller, 642 F.2d 413,                                             

                 425, 208 USPQ 871, 881 (CCPA 1981).  While there must be some suggestion or                                                     
                 motivation for one of ordinary skill in the art to combine the teachings of references, it is not                               
                 necessary that such be found within the four corners of the references themselves; a                                            








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