Appeal No. 1998-2174
Application No. 07/813,733
attacking references individually where the rejection is based upon the teachings of a
combination of references. In re Merck & Co., 800 F.2d 1091, 1097, 231 USPQ 375,
380 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981)). Appellants in particular focus on the deficiencies of Utsumi; however, what
Utsumi is argued as failing to disclose is not what that particular reference is relied upon
as teaching. Appellants have thus not shown that any of the features of instant claim 1
are absent from the prior art.
Nor are appellants’ general allegations of a “lack of suggestion” in the prior art for
the combination persuasive. The examiner points out the teachings relied upon in the
references. Appellants have not addressed those teachings, and have largely ignored
the evidence upon which the rejection is based. Appellants have not shown that the
examiner’s finding1 that suggestion for the combination was present in the prior art is
erroneous.
We therefore sustain the section 103 rejection of claims 1-7 and 9-13, as
appellants have not shown the rejection of any of the claims to be in error.
For the subject matter of claims 8, 14, 15, and 24, the examiner adds Nakagawa
to the combination of references. Nakagawa is relied upon as suggesting, inter alia, an
1 The presence or absence of a motivation to combine references in an obviousness
determination is a pure question of fact. In re Gartside, 203 F.3d 1305, 1316, 53 USPQ2d 1769, 1776
(Fed. Cir. 2000).
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