Appeal No. 2004-0787
Application No. 09/827,048
rejections of claims 33-37, 38, 39, 42, 44 and 48-50 are not well founded. Our
reasons follow.
OPINION
Claims 33-37, 39, 44 and 48-50
We reverse the rejection of claims 33-37, 39, 44 and 48-50. We need to
address only the independent claims, i.e., claims 39 and 44. In rejecting the subject
matter of claims 39 and 44, the Examiner’s relies on the combination of Tozuka and
Gelati.
To hold an invention 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 reference teachings and combine them
in a way that would produce the claimed invention. See, e.g., Heidelberger
Druckmaschinen AG v. Hantscho Commercial Prods., Inc., 21 F.3d 1068, 1072, 30
USPQ2d 1377, 1379 (Fed. Cir. 1994) (When the patent invention is made by
combining known components to achieve a new system, the prior art must provide a
suggestion, or motivation to make such a combination.); Northern Telecom v.
Datapoint Corp., 908 F.2d 931, 934, 15 USPQ2d 1321, 1323 (Fed. Cir. 1990) (It is
insufficient to establish a prima facie case of obviousness based on prior art
references disclosing the components of a patented device, either separately or used
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