Appeal No. 2002-0544 Application No. 09/095,157 corrosive metal does not support obviousness as it fails to provide sufficient reason for one skilled in the art to substitute gold for the brazing material of Fujii (brief, pages 6 & 7). In response to Appellants’ arguments, the Examiner asserts that gold is a well known brazing material that does not corrode in air (answer, page 6). The Examiner further points out that Fujii indicates desirability of corrosion resistance and strength in the joint (page 9, lines 20-21) and concludes that “one of ordinary skill in the art would use gold as the main component for the joint layer of Fujii []” (id.). In rejecting claims under 35 U.S.C. § 103, the Examiner bears the initial burden of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). The court further reasons in Karsten Mfg. Corp. v. Cleveland Gulf Co., 242 F.3d 1376, 1385, 58 USPQ2d 1286, 1293 (Fed. Cir. 2001) that for an invention to be obvious in view of a combination of references, there must be some suggestion, motivation, or teaching in the prior art that would have led a person of ordinary skill in the art to select the references and combine them in the way that would produce the claimed invention. However, “the Board must not only assure that 4Page: Previous 1 2 3 4 5 6 7 8 NextLast modified: November 3, 2007