Ex parte POLLUTURO et al. - Page 7




          Appeal No. 96-3146                                                          
          Application 07/986,489                                                      


          so doing, the examiner is expected to make the factual                      
          determinations set forth in Graham v. John Deere Co., 383 U.S.              
          1, 17, 148 USPQ 459, 467 (CCPA 1966), and to provide a reason               
          why one having ordinary skill in the pertinent art would have               
          been led to modify the prior art or to combine prior art                    
          references to arrive at the claimed invention.  Such reason                 
          must stem from some teaching, suggestion or implication in the              
          prior art as a whole or knowledge generally available to one                
          having ordinary skill in the art.  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 Hosp. Sys., Inc. v. Montefiore Hosp., 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               
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