Appeal No. 1999-2534
Application No. 08/577,915
B. Discussion
In a rejection for obviousness, the burden is on the USPTO to establish that all of
the limitations of the claimed invention are taught in the prior art; if the prior art relied
on does not teach all the limitations, the obviousness rejection must fall. In re Zurko,
258 F.3d 1379, 1385–86, 59 USPQ2d 1693, 1697-98 (Fed. Cir. 2001). Moreover, if all
the limitations are disclosed, but in different references, the burden is on the USPTO to
show that there is a reason, teaching, suggestion, or motivation arising out of the prior
art such that one of ordinary skill in the art would combine the teachings and arrive at
the claimed invention. In re Dance, 160 F.3d 1339, 1343, 48 USPQ2d 1635, 1637
(Fed. Cir. 1998) (“there must be some teaching, suggestion or motivation in the prior art
to make the specific combination that was made by the applicant.”); Oetiker, 977 F.2d
at 1447, 24 USPQ2d at 1446 (“there be some reason, suggestion, or motivation found
in the prior art whereby a person of ordinary skill in the field of the invention would make
the combination. That knowledge can not come from the applicant’s invention itself.”)
This inquiry is factual, and must be supported by substantial evidence in the record. In
re Gartside, 203 F.3d 1305, 1316, 53 USPQ2d 1769, 1776 (Fed. Cir. 2000) (“The
presence or absence of a motivation to combine references in an obviousness
determination is a pure question of fact.”)
We find that the examiner’s reliance on Usifer is faulty because Usifer does not
teach or suggest the required step of reacting the silanes taught to be useful as
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