Appeal No. 2000-1728 Page 3
Application No. 08/785,128
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
All three of the rejections are under 35 U.S.C. § 103. The guidance provided by our
reviewing court for evaluating rejections under Section 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 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, 807, 10 USPQ2d 1843, 1846 (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 conclusion of obviousness may be
made from common knowledge and common sense of the person of ordinary skill in the art
without any specific hint or suggestion in a particular reference. See In re Bozek, 416 F.2d
1385, 1390, 163 USPQ 545, 549 (CCPA 1969). Insofar as the references themselves are
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