Appeal No. 2001-0598 Page 13
Application No. 08/451,090
combining teachings found in the prior art, the same inquiry must be
carried out in the context of a purported obvious “modification” of the
prior art. The mere fact that the prior art may be modified in the
manner suggested by the Examiner does not make the modification
obvious unless the prior art suggested the desirability of the
modification.”
Stated differently, to establish a prima facie case of obviousness, there must be
more than the demonstrated existence of all of the components of the claimed
subject matter. There must be some reason, suggestion, or motivation found in the
prior art whereby a person of ordinary skill in the field of the invention would make
the substitutions required. That knowledge cannot come from the applicants'
disclosure of the invention itself. Diversitech. On the record before us, we find no
reasonable suggestion for combining the teachings of the references relied upon by
the examiner in a manner that would have reasonably led one of ordinary skill in this
art to arrive at the claimed invention. The initial burden of presenting a prima facie
case of obviousness rests on the examiner. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). In our opinion the examiner failed to
provide the evidence necessary to support a prima facie case of obviousness.
Where the examiner fails to establish a prima facie case, the rejection is improper
and will be overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988).
Accordingly, we reverse the rejection of claims 1-6, 8-10, 12, 13, 24,
26 and 28 under 35 U.S.C. § 103 as being unpatentable over ‘795 in view of
Roberts and/or Martin.
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