Appeal No. 2001-1973 Page 10
Application No. 08/734,184
there must be some motivation, suggestion or teaching of the desirability of
making the specific combination that was made by the applicant.”
“[E]vidence of a suggestion, teaching, or motivation to combine may flow
from the prior art references themselves, the knowledge of one of ordinary skill in
the art, or, in some cases, from the nature of the problem to be solved. . . . The
range of sources available, however, does not diminish the requirement for
actual evidence. That is, the showing must be clear and particular. Broad
conclusory statements regarding the teaching of multiple references, standing
alone, are not ‘evidence.’” In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d
1614, 1617 (Fed. Cir. 1999) (citations omitted).
Here, the examiner has pointed to nothing – in the prior art, the knowledge
of a skilled artisan, or the nature of the problem to be solved – that would have
led a skilled artisan to modify the method disclosed by Clement in such a way as
to meet the limitations of claims 2-4 and 10. Therefore, the examiner has not
carried her burden of showing a prima facie case of obviousness, and the
rejection under 35 U.S.C. § 103 is reversed.
Summary
We affirm the rejection based on Timmons because the reference
discloses all of the limitations of independent claim 1. However, we reverse the
rejection for obviousness because the examiner has not shown that a person of
skill in the art would have been motivated to combine the cited references. Thus,
claim 10 is not subject to any outstanding rejection.
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