Appeal No. 2003-1422
Application 09/738,212
“[T]he question under 35 U.S.C. § 103 is not merely
what the references expressly teach, but what they would have
suggested to one of ordinary skill in the art at the time the
invention was made.” In re Lamberti, 545 F.2d 747, 750, 192 USPQ
278, 280 (CCPA 1976). In order to establish a prima facie case
of obviousness, the examiner must identify a suggestion or
motivation to modify the teachings of the cited references to
achieve the claimed invention. In re Kotzab, 217 F.3d 1365,
1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000). The suggestion
or motivation to modify a reference may be implicit from the
prior art as a whole rather than expressly stated. Id. However,
regardless of whether the examiner relies on an express or
implicit showing, he must provide reasons for finding a
limitation to be taught or suggested in the reference. Id.
We are in agreement with appellants, that the examiner
has failed to satisfy his burden of identifying a suggestion or
motivation to modify the teaching of Orbán in view of Hauer to
achieve the claimed invention. In support of his proposed
combination, the examiner states that
[i]t would have been obvious to one of
ordinary skill in the art at the time of the
invention to prepare the composition of US
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