Appeal No. 1999-1384
Application No. 08/583,912
Accordingly we reverse the rejection of claim 25 under 35 U.S.C. § 112,
second paragraph.
THE REJECTION UNDER 35 U.S.C. § 103:
The initial burden of presenting a prima facie case of obviousness rests
on the examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). In meeting this burden, we note that it is well-established that
before a conclusion of obviousness may be made based on a combination of
references, there must have been a reason, suggestion or motivation to lead an
inventor to combine those references. Pro-Mold and Tool Co. v. Great Lakes
Plastics Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996).
Furthermore, as set forth in Ecolochem Inc. v. Southern California Edison, 227,
F.3d 1361, 1375, 56 USPQ2d 1065, 1075 (Fed. Cir. 2000) the:
“[S]uggestion to combine may be found in explicit or implicit
teachings within the references themselves, from the ordinary
knowledge of those skilled in the art, or from the nature of the
problem to be solved.” … However, there still must be evidence
that “a skilled artisan, confronted with the same problems as the
inventor and with no knowledge of the claimed invention, would
select the elements from the cited prior art references for
combination in the manner claimed.” … “[A] rejection cannot be
predicated on the mere identification … of individual components of
claimed limitations. Rather particular findings must be made as to
the reason the skilled artisan, with no knowledge of the claimed
invention, would have selected these components for combination
in the manner claimed.”…. [Citations omitted].
According to the examiner (Answer, page 4) Ligler “teach a device and
method for a displacement assay essentially as claimed….” In addition, the
examiner finds (Answer, page 5) that “[l]imitations regarding … optimization of
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