Appeal No. 1999-2252
Application 08/780,790
221 USPQ 1125, 1127 (Fed. Cir. 1984). However, "[o]bviousness
may not be established using hindsight or in view of the
teachings or suggestions of the invention." Para-Ordnance
Mfg. v. SGS Importers Int’l, 73 F.3d at 1087, 37 USPQ2d at
1239, citing W.L. Gore & Assocs., Inc. v. Garlock, Inc. 721
F.2d at 1553, 220 USPQ at 312-13.
We agree with Appellants that the Examiner has failed to
set forth a prima facie case. The Examiner must establish why
one having ordinary skill in the art would have been led to
the claimed invention by the express teachings or suggestions
found in the prior art, or by implications contained in such
teachings or suggestions. The references of record fail to
provide express teachings or suggestions to make the
combinations suggested by the Examiner.
Therefore, we will not sustain the rejection of Claims 1-
2, 4-7, 9-11, 13, 14 and 16 stand rejected under 35 U.S.C. §
103 as being unpatentable over Appellants' admitted prior art
in view of Aichelmann.
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