Appeal No. 2001-0131
Application No. 08/977,110
elements of the prior art.”); In re Rouffet, 149 F.3d 1350,
1359, 47 USPQ2d 1453, 1459 (Fed. Cir. 1998) (“[T]he Board must
explain the reasons 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 Dembiczak, 175
F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999) (“[T]he
best defense against the subtle but powerful attraction of a
hindsight-based obviousness analysis is rigorous application of
the requirement for a showing of the teaching or motivation to
combine prior art references.”).
None of the other applied prior art references remedy the
fundamental deficiency in the examiner’s analysis.
For these reasons, we hold that the examiner has not
established a prima facie case of obviousness. We therefore
reverse the examiner’s rejection under 35 U.S.C. § 103(a) of all
the appealed claims as unpatentable over Ueki or Mehra in view
of Burns, Christiansen, Dexter, Boni, Itamura, Henman, Herman,
and Dobreski.
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