Appeal No. 2006-0476
Application No. 10/365,258
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, or, in some cases the nature of the problem to be
solved.” In re Huston 308 F.3d 1267, 1278, 64 USPQ2d 1801, 1810 (Fed. Cir.
2002, citing In re Kotzab 217 F.3d 1365, 1370, 55 USPQ 1313, 1317 (Fed. Cir.
2000)). Newhouse teaches a label that is hidden when not used. Seabrook is
concerned with providing a visible reminder to a user. Thus, as the appellants
argue, the purposes of the references are at odds. Further, in as much as the
combination is limited to adding a dedicated area for the user to enter
information, Newhouse provides no insight into why a user would want to add
information to the label. Further, we find no disclosure in Seabrook as to why the
memorandum area is divided into sections, though it appears that these sections
are to provide order to the information. Thus, we do not find that the references
provide a suggestion to make the combination asserted by the examiner, nor do
we find that the nature of the problem to be solved by the references provides the
suggestion to modify the references as asserted by the examiner. Accordingly,
we will not sustain the examiner’s rejection of claims 1 through 4 and 6 through
11 under 35 U.S.C. § 103.
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