Appeal No. 1998-3383
Application 08/352,662
W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d at 1551,
1553, 220 USPQ at 311, 312-13. In addition, our reviewing
court requires the PTO to make specific findings on a
suggestion to combine prior art references. In re Dembiczak,
175 F.3d 994, 1000-01, 50 USPQ2d 1614, 1617-19 (Fed. Cir.
1999).
We note that the Examiner has provided the reason that it
would have been obvious to improve upon the process variables
as taught by Stevens by defining a user defined process
variable in an undefined process variable field of a process
that has already been invoked because it would provide
Stevens' system with enhanced capability of allowing clear
execution of various otherwise inaccessible service functions.
However, we note that the Examiner has failed to answer
whether one of ordinary skill in the art who sets out to solve
the problem and who had before him in his workshop the prior
art would have reasonably expected to use the solution which
is claimed by the Appellant. We note that the Examiner's
general assertion to combine these references without more
does not provide an adequate basis for the Examiner's
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