Appeal No. 1999-0772
Application No. 08/600,165
Aside from the failure to supply evidence to support the
position that one of ordinary skill in the art would have been
led by the teachings of the applied prior art to modify the
process of Herzog to include all of the recited steps in
appealed claims 12, the examiner's allegations, even if accepted
as fact, are insufficient to establish a prima facie of
obviousness. Specifically, the mere fact that the recited steps
may be old is insufficient to establish that one of ordinary
skill in the art would have been led by the teachings of the
applied prior art to arrive at the here claimed invention.
In re Warner, 397 F.2d 1011, 1016, 154 USPQ 173, 177 (CCPA 1967)
("[W]here the invention sought to be patented resides in a
combination of old elements, the proper inquiry is whether
bringing them together was obvious and not, whether one of
ordinary skill, having the invention before him, would find it
obvious through hindsight to construct the invention from
elements of the prior art."); In re Dembiczak, 175 F.3d 994,
999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999) ("[T]he best defense
against the subtle but powerful attraction of a hindsight-based
obviousness analysis is rigorous application of the requirement
for a showing of the teaching or motivation to combine prior art
references.").
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