Appeal No. 2002-0139 Page 4
Application No. 08/991,572
1472, 223 USPQ 785, 787-788 (Fed. Cir. 1984). Accordingly, we
will not sustain the examiner's rejection substantially for the
reasons set forth by appellant in the briefs.
"It is well-established that before a conclusion of
obviousness may be made based on a combination of references,
there must have been a reason, suggestion or motivation to lead
an inventor to combine those references." Pro-Mold and Tool Co.
v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626,
1629 (Fed. Cir. 1996). Here, the examiner has not established
any convincing reason, suggestion or motivation for combining the
references as proposed.
The examiner’s position appears to be that it would have
been obvious to one of ordinary skill in the art to modify the
apparatus of Higuchi by employing the controlling system of
Wesley therein so as to allegedly arrive at appellant’s claimed
apparatus. See pages 3-5 of the answer for the examiner’s
complete statement of the rejection. However, the examiner has
not carried the burden of fairly explaining how the teachings of
Wesley are combinable with Higuchi. Wesley is concerned with an
alleged improved melt spinning of friable and thermally sensitive
preceramic particles of organosilicon via the use of a starve
feeding technique for an extruder and a controller useful
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007