Appeal No. 2000-1765
Application No. 08/947,895
device. The Examiner argues that "one looking to solve the
problem of unbalanced disks that are rotated at high speeds in
disk players would look to see how prior art high speed spindle
motors are kept in balance." See Answer, page 5, lines 13-15.
However, this amounts to nothing more than the Examiner using
hindsight and is a statement of the very objective of the
Appellants' invention.
Our reviewing court has held that the Examiner must explain
the reasons why one of ordinary skill in the art would have been
motivated to select the references and to combine them to
render the claimed invention obvious. In re Lee, 277 F.3d 1338,
1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002). The examiner can
satisfy the burden of showing obviousness of the combination
"only by showing some objective teaching in the prior art or that
knowledge generally available to one of ordinary skill in the art
would lead that individual to combine the relevant teachings of
the references." In re Lee quoting In re Fritch.
Since there is no evidence in the record that the prior art
suggested the desirability of combining Araki's invention with
Appellants' admitted prior art, we will not sustain the
Examiner's rejection of claim 1. Dependent claim 24 on appeal
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