Appeal No. 2005-0324
Application No. 09/390,824
effectively an insertable computer in and of itself. There is no suggestion
in Cranston III et al. to arbitrarily use features from an insertable computer
to augment an existing card carrier. Thus, when these references are
considered as a whole, they fail to provide a suggestion to combine the
cited references to form the claimed invention. The attempt to combine
the features from these entirely distinct devices amounts to nothing more
than hindsight reconstruction, picking and choosing among isolated
disclosures in the prior art. (emphasis original).
In response to the appellant’s arguments, the examiner states, on page 9
of the answer:
Cranston teaches the use of a bulkhead for providing an external
connection means to electrically connect the circuit board to an external
component (col. 4, lines 58-62). Thus, it would have been obvious to a
person having ordinary skill in the art at the time of the invention was
made to use a card including a bulkhead in the device of Moss as taught
by Cranston, to provide an external connection to the card.
We agree with the examiner and find that it would have been obvious to
one of ordinary skill in the art to use a card with a bulkhead in the expansion card
carrier of Moss. In rejecting claims under 35 U.S.C. § 103, the Examiner bears
the initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See
also In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
It is the burden of the examiner to establish why one having ordinary skill in the
art would have been led to the claimed invention by the express teachings or
suggestions found in the prior art, or by the implication contained in such
teachings or suggestions. In re Sernaker 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed. Cir. 1983). “The motivation, suggestion or teaching may come explicitly
from statements in the prior art, the knowledge of one of ordinary skill in the art,
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