Appeal 2007-0118
Application 10/175,612
PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103(a), 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). The examiner can
satisfy this burden by showing that some objective teaching in the prior art or that
knowledge generally available to one of ordinary skill in the art would lead that
individual to combine the relevant teachings of the references such that they would
teach or suggest the claimed subject matter. In re Fine, 837 F.2d 1071, 1074,
5 USPQ2d 1596, 1598 (Fed. Cir. 1988). It is incumbent upon the examiner to
establish a factual basis to support the legal conclusion of obviousness. See id. at
1073, 5 USPQ2d at 1598.
The prior art as a whole must “suggest the desirability” of the combination.
In re Beattie, 974 F.2d 1309, 1311, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992)
(internal quotation omitted); Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340,
1349, 53 USPQ2d 1580, 1587 (Fed. Cir. 2000) (“Trade-offs often concern what is
feasible, not what is, on balance, desirable. Motivation to combine requires the
latter.” (emphasis added)).
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the
reference, or would be led in a direction divergent from
the path that was taken by the applicant. The degree of
teaching away will of course depend on the particular
facts; in general, a reference will teach away if it suggests
that the line of development flowing from the reference's
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