Appeal No. 1999-2131 Page 12
Application No. 08/971,504
and the appellants' claims, we are unable to focus our
evaluation of the rejection before us on appeal so as to
determine if the examiner has provided any sound reasoning for
the combination of Drake and Du Mond. The examiner admits
that Drake does not provide a teaching or suggestion to
combine the references, argues that Du Mond provides it, and
refers to page 590 of Du Mond and "Stellite 6B" in Table 1 and
the middle and right columns (answer, page 4). However, the
examiner does not describe what there is in Du Mond that would
have been suggestive of the combination with Drake.3
When the incentive to combine the teachings of the
references is not readily apparent, it is the duty of the
examiner to explain why the combination of the teachings is
proper. Without it, the examiner has failed procedurally to
establish a prima facie case of obviousness. Accordingly, it
is our opinion that the examiner's rejection does not set
forth a prima facie case in that the examiner has not
explained the differences between Drake and the claims on
3 The mere fact that the references can be combined or modified does not
render the resultant combination obvious unless the prior art also suggests
the desirability of the combination. See In re Mills, 916 F.2d 680, 682, 16
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