Ex parte OGURA et al. - Page 3




          Appeal No. 1999-1064                                       Page 3           
          Application No. 08/654,766                                                  


          regarding the rejections, we make reference to the Examiner’s               
          Answer (Paper No. 24) and to the Appellants’ Briefs (Papers No.             
          23 and 26).                                                                 


                                       OPINION                                        
               In reaching our decision on the issues raised in this                  
          appeal, we have carefully assessed the claims, the prior art                
          applied against the claims, and the respective views of the                 
          examiner and the appellants as set forth in the Answers and the             
          Briefs.  As a result of our review, we have determined that the             
          rejection should not be sustained.  Our reasoning in support of             
          this conclusion follows.                                                    
               The test for obviousness is what the combined teachings of             
          the prior art would have suggested to one of ordinary skill in              
          the art.  See, for example, In re Keller, 642 F.2d 413, 425,                
          208 USPQ 871, 881 (CCPA 1981).  In establishing a prima facie               
          case of obviousness, it is incumbent upon the examiner to                   
          provide a reason why one of ordinary skill in the art would                 
          have been led to modify a prior art reference or to combine                 
          reference teachings to arrive at the claimed invention.  See Ex             








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