Appeal No. 2003-1018
Application No. 09/093,771
F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992) (citations omitted). An
adequate showing of motivation to combine requires “evidence that ‘a skilled artisan,
confronted with the same problems as the inventor and with no knowledge of the
claimed invention, would select the elements from the cited prior art references for
combination in the manner claimed.’” Ecolochem, Inc. v. Southern Calif. Edison Co.,
227 F.3d 1361, 1375, 56 USPQ2d 1065, 1076 (Fed. Cir. 2000) (quoting In re Rouffet,
149 F.3d 1350, 1357, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998)).
We do not find that the examiner has met his burden of putting forth sufficient
“evidence that ‘a skilled artisan, confronted with the same problems as the inventor and
with no knowledge of the claimed invention, would select the elements from the cited
prior art references for combination in the manner claimed.’” Ecolochem, Inc. v.
Southern Calif. Edison Co., 227 F.3d 1361, 1375, 56 USPQ2d 1065, 1076 (Fed. Cir.
2000).
It is well-established that before a conclusion of obviousness may be made
based on a combination of references, there must have been a reason, suggestion, or
motivation to lead an inventor to combine those references. Pro-Mold & Tool Co. v.
Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir.
1996) (citation omitted). Moreover, the prior art must also establish that one would
have had a reasonable expectation of achieving the present invention, i.e., a
reasonable expectation of success. In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438,
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007