Appeal No. 1998-0040 Page 6
Application No. 08/068,753
have been led by those disclosures to modify the particular
apparatus of Riley so as to arrive at the herein claimed
subject matter. In this context, the examiner must provide
specific reasons or suggestions for combining the teachings
and disclosures of the applied secondary references with
Riley. See In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d
1614, 1617 (Fed. Cir. 1999)(“[T]he showing [of evidence of a
suggestion, teaching, or motivation to combine] must be clear
and particular.”). Here, the examiner has not established any
convincing reason, suggestion or motivation for combining the
references as proposed based on the tachings of the applied
references to modify the apparatus of Riley in a manner so as
to arrive at the claimed subject matter (see the brief, pages
9-15). 4
For the foregoing reasons, we determine that the examiner
has not established a prima facie case of obviousness in view
of the reference evidence. Accordingly, we will not sustain
either of the examiner’s § 103 rejections.
4We note that Sakamoto, Toshiba and Wanlass as applied
against dependent claim 26 do not cure the above-noted
deficiencies.
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