Appeal No. 2005-1246 Page 3
Application No. 09/776,147
examiner's complete reasoning in support of the rejection, and to the brief (filed January
12, 2004) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we will sustain the rejection of claims 23 and 24 for the reasons which
follow.
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A case of obviousness is established when the
teachings of the prior art itself would appear to have suggested the claimed subject
matter to one of ordinary skill in the art. See In re Bell, 991 F.2d 781, 783, 26 USPQ2d
1529, 1531 (Fed. Cir. 1993). The motivation, suggestion or teaching may come
explicitly from statements in the prior art, the knowledge of one of ordinary skill in the
art, or, in some cases the nature of the problem to be solved. See In re Dembiczak,
175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999). In addition, the teaching,
motivation or suggestion may be implicit from the prior art as a whole, rather than
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