Appeal No. 2000-1042
Application No. 08/986,449
Cabrera alone clearly is evidentiarily insufficient to establish
a prima facie case of obviousness vis-à-vis the here claimed
method.
The other applied references do not cure the deficiency of
Cabrera. At most, these references merely evince that certain
features of the here claimed method were generally known in the
prior art. However, this is not enough to establish a prima
facie case of obviousness.
This is because obviousness cannot be established by
combining the teachings of the prior art to produce the claimed
invention, absent some teaching, suggestion or incentive
supporting the combination. ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
Here, the examiner has failed to advance an exposition with
meaningful specificity as to why the applied prior art would have
provided an artisan with some teaching, suggestion or incentive
to combine particular reference features in such a manner as to
result in the appellants’ claimed method.
For example, it is expressly argued in the brief that “[n]o
reference teaches or suggests applicant’s basic step of
relatively moving the plasma and pipe (object) lengthwise of the
pipe, to achieve uniformity, in implantation of a pipe bore”
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