Appeal No. 1997-3650
Application No. 08/206,658
not the appellants’ achievement, that must establish the
obviousness of the combination. Obviousness cannot be
established by hindsight. In re Gorman, 933 F.2d 982, 986-87,
18 USPQ2d 1885, 1888 (Fed. Cir. 1991).
As our reviewing court4 stated,
. . . “virtually all [inventions] are combinations of
old elements.” . . . Therefore an examiner may often
find every element of a claimed invention in the prior
art. If identification of each claimed element in the
prior art were sufficient to negate patentability, very
few patent would ever issue . . . .
To prevent . . . hindsight . . . to defeat
patentability of the invention, this court requires the
examiner to show a motivation to combine the references
that create the case of obviousness.
However, the examiner has not carried his burden of showing some
suggestion or motivation to combine the prior art references to
arrive at the claimed subject matter. In re Bell, 991 F.2d 781,
783, 26 USPQ2d 1529, 1530-31 (Fed. Cir. 1993) (the examiner has
the initial burden of showing a prima facie case of obviousness
regarding the claimed subject matter).
In view of the foregoing, we are constrained to reverse the
examiner’s decision rejecting claims 31 through 44, 46 and 47
under 35 U.S.C. § 103.
4 Rouffet, 149 F.3d at 1357, 47 USPQ2d at 1457-58
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