Appeal No. 1998-0063
Application No. 08/057,805
detected, but rather includes such an area regardless of
whether defects are detected. The examiner asserts (Answer,
page 3) that it would have been obvious to the skilled artisan
to modify Harari to "generate back-up storage only when
needed."
In a rejection under 35 U.S.C. § 103, it is incumbent
upon the examiner to establish a factual basis to support the
legal conclusion of obviousness. See In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is required to provide a reason from some
teaching, suggestion or implication in the prior art as a
whole, or knowledge generally available to one of ordinary
skill in the art, why one having ordinary skill in the
pertinent art would have been led to modify the prior art to
arrive at the claimed invention. Uniroyal, Inc. v. Rudkin-
Wiley, 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1438 (Fed. Cir.
1988), cert. denied, 488 U.S. 825 (1988). 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).
4
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007