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; aPage: Previous 1 2 3 4 5 6 7 8 9 10 NextLast modified: November 3, 2007