Appeal No. 96-0542
Application 08/025,603
Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.),
cert. denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657,
664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS
Hospital Systems, Inc. v. Montefiore Hospital, 732 F.2d 1572,
1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings by
the examiner are an essential part of complying with the
burden of presenting a prima facie case of obviousness. Note
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992).
As indicated by the cases just cited, the examiner has
at least two responsibilities in setting forth a rejection
under 35 U.S.C. § 103. First, the examiner must identify all
the differences between the claimed invention and the
teachings of the prior art. Second, the examiner must explain
why the identified differences would have been the result of
an obvious modification of the prior art. In our view, the
examiner has not properly addressed his first responsibility
so that it is impossible that he has successfully fulfilled
his second responsibility.
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