Appeal No. 1997-4305
Application No. 08/477,023
applicant’s specification as relied upon by the examiner all fail to make up for this
deficiency in Hughes.
We remind the examiner, as set forth in Ecolochem Inc. v. Southern
California Edison, 227, F.3d 1361, 1375, 56 USPQ2d 1065, 1075 (CAFC 2000)
“[a] rejection cannot be predicated on the mere identification … of individual
components of claimed limitations. Rather, particular findings must be made as to
the reason the skilled artisan, with no knowledge of the claimed invention, would
have selected these components for combination in the manner claimed.”
The initial burden of presenting a prima facie case of obviousness rests on
the examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). In satisfying this initial burden, “it is impermissible within the framework
of section 103 to pick and choose from any one reference only so much of it as will
support a given position to the exclusion of other parts necessary to the full
appreciation of what such reference fairly suggests to one skilled in the art.” In re
Wesslau, 353 F.2d 238, 241, 147 USPQ 391, 393 (CCPA 1965); see also In re
Mercer, 515 F.2d 1161, 1165-66, 185 USPQ 774, 778 (CCPA 1975).
On the record before us, we find no reasonable suggestion for combining the
teachings of the references relied upon by the examiner in a manner which would
have reasonably led one of ordinary skill in this art to arrive at the claimed invention.
On these circumstances, we find that the examiner failed to provide the evidence
necessary to support a prima facie case of obviousness.
Where the examiner fails to establish a prima facie case, the rejection is
improper and will be overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
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