Appeal No. 2006-0844 Παγε 4
Application No. 10/118,027
We must remind the examiner that in order to establish a prima facie case of
obviousness, there must be a suggestion or motivation in the prior art to modify the
references. The extent to which such suggestion must be explicit in, or may be fairly
inferred from, the references, is decided on the facts of each case, in light of the prior
art and its relationship to the appellants' invention. As in all determinations under
35 U.S.C. § 103, the decision maker must bring judgment to bear. It is impermissible,
however, simply to engage in a hindsight reconstruction of the claimed invention, using
the appellants' structure as a template and selecting elements from references to fill the
gaps. The references themselves must provide some teaching whereby the appellants'
combination would have been obvious. In re Gorman, 933 F.2d 982, 986, 18 USPQ2d
1885, 1888 (Fed. Cir. 1991) (citations omitted). That is, something in the prior art as a
whole must suggest the desirability, and thus the obviousness, of making the
modification. See In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed.
Cir. 1992); Lindemann Maschinenfabrik GmbH v. American Hoist and Derrick Co., 730
F.2d 1452, 1462, 221 USPQ 481, 488 (Fed. Cir. 1984).
We hold that the examiner has not satisfied the initial burden of establishing a
case of prima facie obviousness. The examiner has not identified any teaching,
suggestion or motivation for modifying the Bauer/Vollimor combination in the manner
proposed by the examiner. Characterizing the difference between the claimed subject
matter and the disclosures of Bauer and Vollimor as a mere matter of design choice
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