Appeal No. 1998-2620
Application No. 08/512,033
25; col. 3, ll. 6-8). Therefore the exhaust conduit is formed
at and protruded from a hole in one of the auxiliary heating
furnaces (col. 3, ll. 20-27).
It is well settled that the initial burden rests with the
examiner to present evidence to support a prima facie case of
obviousness. See In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). It is equally well
settled that the examiner must identify, when combining
references, some suggestion, teaching or motivation to combine
the references as proposed, and this suggestion or teaching
may come from the prior art references themselves, the
knowledge of one of ordinary skill in the art, or from the
nature of the problem to be solved. See In re Dembiczak, 175
F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999); and In
re Rouffet, 149 F.3d 1350, 1355-56, 47 USPQ2d 1453, 1456 (Fed.
Cir. 1998). Here the examiner has not met the initial burden
of proof and has failed to identify any reason or suggestion,
much less a convincing one, to combine Ozaki with the admitted
prior art. The examiner has failed to provide any factual
evidence or support for his statement on page 5 of the Answer
6
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