Appeal No. 1999-2001
Application No. 08/664,089
between display controller 37 and display monitor 30,
with or without the improper hindsight provided by
Applicants' disclosure. There is no motivation in the
art for such a combination, and even if there were, the
resulting combined device would not operate as
suggested by the examiner.
We agree with appellants.
In rejecting claims under 35 U.S.C. § 103, it is incumbent
upon the examiner to provide a reason why one having ordinary
skill in the pertinent art would have been led to modify the
prior art or to combine prior art references to arrive at the
claimed invention. Such reason must stem from some teaching,
suggestion or implication in the prior art as a whole or
knowledge generally available to one having ordinary skill in the
art. Uniroyal, Inc. v. Rudkin-Wiley , 837 F.2d 1044, 1052, 5
USPQ2d 1434, 1438 (Fed. Cir.1988), cert. denied, 488 U.S. 825
(1988). These showings by the examiner are an essential part of
complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). In the absence of such showings,
any combination of references cannot be considered as being based
on anything other than impermissible hindsight.
The examiner has failed to provide any such teaching or
suggestion from the prior art. We find no suggestion in Shah or
Sakoda, which has nothing to do with a display, as to why Shah's
removable translation board for translating signals between a
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