Appeal No. 1999-2141
Application No. 08/657,164
appellant’s disclosure as a blueprint to reconstruct the claimed invention from the isolated
teachings of the prior art. See, e.g., Grain Processing Corp. v. American Maize-Products
Co., 840 F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed. Cir. 1988). The Federal Circuit
states that "[the] mere fact that the prior art may be modified in the manner suggested by
the Examiner does not make the modification obvious unless the prior art suggested the
desirability of the modification." In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780,
1783-84 n.14 (Fed. Cir. 1992), citing In re Gordon, 773 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984).
In the present case the examiner has failed to provide a fact based explanation
premised on the correct legal standard. It appears that the primary reason, suggestion or
motivation for combining the cited references as suggested by the examiner appears to
come from appellant’s disclosure. The examiner points to no scientific or technical
reasoning within the references themselves which would suggest modification of the
method of Fohlman to obtain the appellant’s claimed method.
Where, as here, the examiner fails to establish a prima facie case, the rejection is
improper and will be overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). In view of the above, the rejection of claims 8-11 is reversed.
35 U.S.C. § 103
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