Appeal No. 2002-0311 Page 3
Application No. 09/030,241
The initial burden of establishing a basis for denying patentability to a claimed
invention rests upon the examiner. See In re Piasecki. 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984). The question under 35 U.S.C. §103 is not merely
what the references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made. See Merck & Co. v. Biotech
Labs., Inc. 874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir.), cert. denied,
493 U.S. 975 (1989) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981). While there must be some suggestion or motivation for one of ordinary skill in
the art to combine the teachings of references, it is not necessary that such be found
within the four corners of the references themselves; a conclusion of obviousness may
be made from common knowledge and common sense of the person of ordinary skill in
the art without any specific hint or suggestion in a particular reference. See In re
Bozak, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969). Insofar as the
references themselves are concerned, we are bound to consider the disclosure of each
for what it fairly teaches one of ordinary skill in the art, including not only the specific
teachings, but also the inferences which one of ordinary skill in the art would reasonably
have been expected to draw therefrom. See In re Boe, 355 F.2d 961, 965, 148 USPQ
507, 510 (CCPA 1966) and In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344
(CCPA 1968).
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