Appeal No. 2002-2152
Application No. 08/701,764
Board must explain the reasons one of ordinary skill in the art
would have been motivated to select the references and to
combine them to render the claimed invention obvious.”); In re
Fine, 837 F.2d 1071, 1075, 5 USPQ2d 1596, 1600 (Fed. Cir.
1988)(“‘teachings of references can be combined only if there is
some suggestion or incentive to do so.’”)(quoting ACS Hosp.
Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ
929, 933 (Fed. Cir. 1984)); In re Warner, 397 F.2d 1011, 1016,
154 USPQ 173, 177 (CCPA 1967)(“W]here the invention sought to be
patented resides in a combination of old elements, the proper
inquiry is whether bringing them together was obvious and not,
whether one of ordinary skill, having the invention before him,
would find it obvious through hindsight to construct the
invention from elements of the prior art.”).
While the examiner would have us believe that “[i]t would
have been obvious to form the conductor as a coating on the
insulator, since this is a known structure which supports and
fixes the conductor and to provide a distal cathode with a
conductive shroud in the form of a coating...” (answer, page 4),
this position is not based on any objective evidence. In re
Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433 (Fed. Cir. 2002).
Even assuming that there is some motivation in the prior
art to combine the references, the combination would not result
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