Appeal No. 2001-1135
Application 09/002,733
1444 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The Examiner can
satisfy this burden by showing that some objective teaching in
the prior art or knowledge generally available to one of ordinary
skill in the art suggests the claimed subject matter. In re
Fine, 87 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Only if this initial burden is met does the burden of coming
forward with evidence or argument shift to the Appellant.
Oetiker, 977 F.2d at 1445, 24 USPQ at 1444. See also Piasecki,
745 F.2d at 1472, 223 USPQ at 788.
The factual inquiry whether to combine references under
35 U.S.C. § 103 must “be based on objective evidence of record.”
In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433 (Fed. Cir.
2002). This “showing must be clear and particular.” In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999). “In other words, the Board must explain the reasons one
of ordinary skill in the art would have been motivated to select
the references and combine them to render the claimed invention
obvious.” Lee, 277 F.3d at 1343, 61 USPQ2d at 1434 quoting In re
Fritch, 972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir.
1992). See also Dembiczak, 175 F.3d at 999, 50 USPQ2d at 1617
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