Appeal No. 2002-1766 Page 3
Application No. 09/018,790
guidelines provided by our reviewing court: The examiner bears the initial burden of
presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532,
28 USPQ2d 1955, 1956 (Fed. Cir. 1993), which is established when the teachings of
the prior art itself would appear to have suggested the claimed subject matter to one of
ordinary skill in the art. See In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531
(Fed. Cir. 1993). This is not to say, however, that the claimed invention must expressly
be suggested in any one or all of the references, rather, the test for obviousness is what
the combined teachings of the references would have suggested to one of ordinary skill
in the art. See Cable Elec. Prods. v. Genmark, Inc., 770 F.2d 1015, 1025, 226 USPQ
881, 886-87 (Fed. Cir. 1985). 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 Bozek, 416 F.2d 1385,
1390, 163 USPQ 545, 549 (CCPA 1969). Skill is presumed on the part of the artisan,
rather than the lack thereof. See In re Sovish, 769 F.2d 738, 742-43, 226 USPQ 771,
774 (Fed. Cir. 1985). 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 inference 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); In re Preda, 401 F.2d
825, 826, 159 USPQ 342, 344 (CCPA 1968).
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