Ex parte REIMANN et al. - Page 6


          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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