Ex parte HAWKINS et al. - Page 8




          Appeal No. 96-3998                                                          
          Application No. 08/344,397                                                  


          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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