Appeal No. 2001-1094
Application 09/237,578
Only if this initial burden is met does the burden of coming
forward with evidence or argument shift to the Appellants.
Oetiker, 977 F.2d at 1445, 24 USPQ at 1444. See also Piasecki
745 F.2d at 1472, 223 USPQ at 788.
The factual inquiry whether to combine references under
35 U.S.C. § 103 must “be based on objective evidence of record.”
In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433 (Fed. Cir.
2002). This “showing must be clear and particular.” In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999). “In other words, the Board must explain the reasons one
of ordinary skill in the art would have been motivated to select
the references and combine them to render the claimed invention
obvious.” In re Lee, 277 F.3d at 1343, 61 USPQ2d at 1434 quoting
In re Fritch, 972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed.
Cir. 1992). See also Dembiczak, 175 F.3d at 999, 50 USPQ2d at
1617 quoting In re Rouffet, 149 F.3d 1350, 1359, 47 USPQ2d 1453,
1459 (Fed. Cir. 1998). “[T]he Board must not only assure that
the requisite findings are made, based on evidence of record, but
must also explain the reasoning by which the findings are deemed
to support the agency’s conclusion.” In re Lee, 277 F.3d at
1344, 61 USPQ2d at 1434. With these principles in mind, we
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