Appeal No. 1999-2081
Application 08/786,228
necessarily mean the invention is obvious, nor is the use
of hindsight permitted. Graham v. John Deere Co., 383
U.S. 1, 37, 148 USPQ 459, 474 (1966). As correctly
pointed out by appellant on pages 7 and 8 of the brief,
the combination of references lacks the requirement that
some teaching, suggestion or incentive derived from the
prior art supports the combination. ACS Hosp. Sys., Inc.
v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929,
933 (Fed. Cir. 1984). In this context, we note that the
examiner has not explained why the references themselves
would have led one of ordinary skill in the art to
combine their teachings as proposed by the examiner.
This is a further deficiency in the examiner’s
presentation. See In re Rinehart, 531 F.2d 1048, 1051,
189 USPQ 143, 147 (CCPA 1976). For example, the examiner
has not provided an explanation of why one of ordinary
skill in the art would have been motivated to substitute
the ball assembly of Lavine for apparatus 22 of
Brazelton, especially in view of the fact that apparatus
22 of Brazelton is concerned with high shear mixing,
whereas the ball valve assembly disclosed in Lavine
concerns emulsification and blending of liquids.
Accordingly, we find that the examiner has not met
his burden of setting forth a prima facie case of
obviousness.
In view of the foregoing, the decision of the
examiner is reversed.
REVERSED
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