Appeal No. 2003-0130
Application 08/950,187
obviousness can be established by combining or modifying the
teachings of the prior art to produce the claimed invention where
there is some teaching, suggesting, or motivation to do so found
either in the reference or in the knowledge generally available
to one of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Thus, the examiner
must show some teaching, suggestion, or motivation for modifying
Twu to produce the claimed invention.
Here, the examiner asserts that appellants’ claimed subject
matter would have been obvious because “[i]t appears that the
claimed subject matter is within the generic disclosure of the
prior art and expected to work.” (answer, page 4). This
reasoning is completely devoid of any teaching, suggestion, or
motivation found either in the reference or in the knowledge
generally available to one of ordinary skill in the art. Because
of this lack of teaching, suggestion, motivation or explanation,
we determine that the examiner has not established a prima facie
case of obviousness. Id.
We therefore reverse the rejection of claim 1 under
35 U.S.C. § 102(b), or in the alternative, under 35 U.S.C. § 103
in view of Twu.
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