Appeal No. 2001-0940 Page 6
Application No. 08/467,712
An adequate showing of motivation to combine requires “evidence that ‘a skilled
artisan, confronted with the same problems as the inventor and with no knowledge of
the claimed invention, would select the elements from the cited prior art references for
combination in the manner claimed.’” Ecolochem, Inc. v. Southern Calif. Edison Co.,
227 F.3d 1361, 1375, 56 USPQ2d 1065, 1075 (Fed. Cir. 2000) (quoting In re Rouffet,
149 F.3d 1350, 1357, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998)). Thus, “[o]ne cannot
use hindsight reconstruction to pick and choose among isolated disclosures in the prior
art to deprecate the claimed invention.” In re Fine, 837 F.2d 1071, 1075, 5 USPQ2d
1596, 1600 (Fed. Cir. 1988).
In our judgment, on this record, the only reason or suggestion to modify the
teachings of the references in the manner proposed by the examiner comes from
appellant’s specification. Accordingly, we find that the examiner’s burden of
establishing a prima facie case of obviousness has not been met and the rejection of
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