Appeal No. 1997-3974
Application No. 08/541,254
1988). In 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 (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). If that burden is met,
the burden then shifts to the applicant to overcome the prima
facie case with argument and/or evidence. Obviousness is then
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