Appeal No. 1999-1398 Page 4
Application No. 08/559,496
At the outset, we point out that the appellant has not grouped the claims in
accordance with the manner in which the rejections were applied, and has provided
arguments with respect to only a few of the claims. We have, however, carefully
considered all of the arguments, and have treated those claims whose patentability has not
been separately argued before the Board as standing or falling with the claims from which
they depend. See In re Nielson, 816 F.2d 1567, 1571, 2 USPQ2d 1525, 1527 (Fed. Cir.
1987).
All of the rejections are under 35 U.S.C. § 103, and the guidance provided to us by
our reviewing court for evaluating such rejections is as follows: The initial burden of
establishing a basis for denying patentability to a claimed invention rests upon the
examiner. See In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984). The question under 35 U.S.C. §103 is not merely what the references expressly
teach but what they would have suggested to one of ordinary skill in the art at the time the
invention was made. See Merck & Co. v. Biotech Labs., Inc. 874 F.2d 804, 10 USPQ2d
1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989) and In re Keller, 642 F.2d 413, 425,
208 USPQ 871, 881 (CCPA 1981). While there must be some suggestion or motivation
for one of ordinary skill in the art to combine the teachings of references, it is not necessary
that such be found within the four corners of the references themselves; a conclusion of
obviousness may be made from common knowledge and common sense of the person of
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