Appeal No. 2000-0431 Page 6
Application No. 08/789,127
obviousness.” In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993)(citing In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992)). "’A prima facie
case of obviousness is established when the teachings from the
prior art itself would appear to have suggested the claimed
subject matter to a person of ordinary skill in the art.’" In re
Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993)
(quoting In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147
(CCPA 1976)).
Here, the examiner fails to allege, let alone show, that
teachings from the references disclose or would have suggested
the claimed limitations. Rather than comparing the language of
the claims with the references, he merely describes the latter.
We will not “resort to speculation,” In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 178 (CCPA 1967), as to how the aforementioned
limitations might be disclosed or suggested thereby. Therefore,
we reverse the rejection of claims 1 and 13 and of claims 2-7 and
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