Appeal No. 2001-1242
Application No. 08/530,650
Gordon, 773 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). The Federal Circuit
also has found that if a rote invocation of a high level of skill in the art could suffice to supply
a motivation to combine, the more sophisticated scientific fields would rarely, if ever,
experience a patentable technical advance. “To counter this potential weakness in the
obviousness construct, the suggestion to combine requirement stands as a critical
safeguard against hindsight analysis and rote application of the legal test for obviousness.”
In re Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1457 (Fed. Cir. 1998). Moreover,
the use of hindsight in the selection of references that comprise the case of obviousness
is forbidden. In re Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991).
In the present case, the examiner has failed to indicate the specific understanding
or principle within the knowledge of a skilled artisan, explicit or implicit, that would have
motivated one with no knowledge of appellant’s invention to make the combination in the
manner claimed. In re Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1457 (Fed. Cir.
1998). In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000).
The rejection of claims 1-3, 8-12 and 14-25 under 35 U.S.C. § 103 over Buchalter,
alone or in combination with Dake and/or Lavash is reversed. The rejection of claims 22
and 24 under 35 U.S.C. § 103 over Buchalter, by itself or in combination with Dake and/or
Lavash, further in view of Ampulski is reversed.
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