Appeal No. 1999-1344
Application 08/364,718
teachings which address different problems and we find no
reason or suggestion in either prior art reference to enable
their combination in this obviousness analysis. We conclude
therefore that the Examiner has failed to establish a prima
facie case of obviousness.
When an obviousness determination is based on multiple
prior art references, there must be a showing of some
"teaching, suggestion, or reason" to combine the references.
Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1348, 53
USPQ2d 1580, 1586 (Fed. Cir.) cert. denied, 530 U.S. 1238
(2000). The Federal Circuit further instructs that "[t]he
mere fact that the prior art may be modified in the manner
suggested by the Examiner does not make the modification
obvious unless the prior art suggested the desirability of the
modification." In re Fritch, 972 F.2d 1260, 1266 n.14, 23
USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992), citing In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984). It is further established that "such a suggestion may
come from the nature of the problem to be solved, leading
inventors to look to references relating to possible solutions
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007