Appeal No. 97-1163
Application 08/200,044
U.S. 1, 17, 148 USPQ 459, 467 (CCPA 1966) and to provide
reasons why one with ordinary skill in the art would have been
led by the prior art to arrive at the claimed invention. Such
reasons must stem from some teaching or suggestion in the
prior art as a whole. Uniroyal, Inc. v. Rudkin-Wiley 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.
Here, we find that the examiner failed to determine and
appreciate all the differences between the appellants’ claimed
invention and the applied prior art reference, Albanese.
Specifically, claim 1 recites two variable resistances which
are not only in series with each other, but also each
connected in parallel with a corresponding one of the cooling
apparatus (claim 1) or laser (claim 12). Albanese does not
disclose series connected variable resistances, specifically
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