Appeal No. 1999-1742
Application No. 08/730,674
of impermissible hindsight. See brief, pp. 12-15. We agree.
To establish a prima facie case of obviousness, the
examiner must show "some objective teaching in the prior art or
that knowledge generally available to one of ordinary skill in
the art would lead that individual to combine the relevant
teachings of the references." In re Fine, 837 F.2d at 1074, 5
USPQ2d at 1598. It is to be noted, however, that citing
references which merely indicate that isolated elements and/or
features recited in the claims are known is not a sufficient
basis for concluding that the combination of claimed elements
would have been obvious. That is to say, there should be
something in the prior art or a convincing line of reasoning in
the answer suggesting the desirability of combining the
references in such a manner as to arrive at the claimed
invention. In re Deminski, 796 F.2d 436, 443, 230 USPQ 313, 316
(Fed. Cir. 1986).
Reviewing the answer, we note that the examiner fails to
identify anything in the art suggesting the desirability of
combining the teachings of Blackburn and Breed other than a
general desire “to provide an appropriate signal that would
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