Appeal No. 1998-2379
Application No. 08/315,942
reasonable expectation of success. Finally, the prior art
reference (or references when combined) must teach or
suggest all the claim limitations. The teaching or
suggestion to make the claimed combination and the
reasonable expectation of success must both be found in
the prior art, and not based on applicants' disclosure.
In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442
(Fed. Cir. 1991). The outstanding rejections do not meet
any of the criteria established in Vaeck. It is readily
apparent that the examiner combined the references based
upon the appellants’ disclosed and claimed invention
because the references do not provide a teaching or
suggestion to combine. Obviousness can only be
established by combining or modifying the teachings of
the prior art to produce the claimed invention where
there is some teaching, suggestion, or motivation to do
so found either in the references themselves or in the
knowledge generally available to one of ordinary skill in
the art. In re Fine, 837 F.2d 1071, 1075, 5 USPQ2d 1596,
1599 (Fed. Cir. 1988); In re Jones, 958 F.2d 347, 351, 21
USPQ2d 1941, 1943-44 (Fed. Cir. 1992).
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