Appeal No. 2000-0660
Application No. 08/985,278
972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir
1992), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984). In addition, our reviewing court stated
in In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433 (Fed.
Cir. 2002), that when making an obviousness rejection based on
combination, "there must be some motivation, suggestion or
teaching of the desirability of making the specific combination
that was made by Applicant" (quoting In re Dance, 160 F.3d 1339,
1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998).
We agree with the Appellants that the Examiner has failed to
point to any teachings in Young that would suggest the
combination of the Young and Hayashi references to achieve the
claim 3 limitations. As such, we cannot sustain the Examiner's
rejection of claim 3 as being unpatentable under 35 U.S.C. § 103
in view of Hayashi and Young.
In view of the foregoing, the decision of the Examiner
rejecting claims 1 and 2 under 35 U.S.C. § 102 is affirmed;
however, the decision of the Examiner rejecting claims 5 and 6
under 35 U.S.C. § 102 and rejecting claims 3 and 7 through 11
under 35 U.S.C. § 103 is reversed.
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