Appeal No. 1999-2141
Application No. 08/657,164
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellant regarding the above-noted rejections, we make reference to the examiner's
Answer (Paper No. 21, January 27, 1999) for the examiner's complete reasoning in
support of the rejection, and to the appellant’s Brief (Paper No. 20, December 21, 1998)
for the appellant’s arguments thereagainst. As a consequence of our review, we make the
determinations which follow.
DECISION ON APPEAL
35 U.S.C. § 103
Claims 8-11 stand rejected under 35 U.S.C. § 103 as unpatentable for obviousness
over Lind and Fohlman taken with Scopes, Tyler and Bougis.
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of
presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). 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 & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626,
1629, (Fed. Cir. 1996). Furthermore, the conclusion that the claimed subject matter is
prima facie obvious must be supported by evidence, as shown by some objective teaching
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