Appeal No. 1999-1669
Application No. 08/816,756
We have no doubt that the prior art could be modified in a manner consistent with
appellants’ specification and claims, but the fact that the prior art could be so modified
would not have made the modification obvious unless the prior art suggested the
desirability of the modification. In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127
(Fed. Cir. 1984). The only reason or suggestion we find on the record to combine the cited
references comes from appellants’ specification. “Combining prior art references without
evidence of such a suggestion . . . simply takes the inventor’s disclosure as a blueprint for
piecing together the prior art to defeat patentability -- the essence of hindsight.” In re
Dembiczac, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999).
We find that the examiner’s burden of establishing a prima facie case of
obviousness has not been met for even claims 1 , 8 and 12, which represent the invention
in its broadest aspect. Accordingly, on this record, we are constrained to reverse the
rejection of claim 1 through 17 under 35 U.S.C. § 103.5
4(...continued)
references, there must have been a reason, suggestion, or motivation to lead an inventor
to combine those references.”
5Having determined that a prima facie case of obviousness has not been
(continued...)
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