Appeal No. 2000-1057
Application 09/016,100
reasons why one of ordinary skill in the art would have been
motivated to modify Grewal in view of Hayashi to achieve the
invention as claimed. However, the examiner has failed to
identify where, in the prior art, one of ordinary skill in the
art would have found a disclosure or suggestion which would have
led him to make the proposed modifications. See Kotzab, 217 F.3d
at 1371, 55 USPQ2d at 1317 (“[P]articular findings must be made
as to the reason the skilled artisan, with no knowledge of the
claimed invention, would have selected these components for
combination in the manner claimed.”).
In contrast, Appellants have persuasively shown that
there is simply no teaching or suggestion in the references which
would have led one of ordinary skill in the art to have combined
the references as proposed by the Examiner to achieve the
invention as claimed. Rather, the Examiner’s motivation for
combining the references was clearly gleaned from Appellants’
specification.
Having concluded that the Examiner has failed the
establish a prima facie case of obviousness, we reverse the
rejection.
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007