Appeal No. 1999-2068
Application 08/650,038
We will not sustain the rejections of claims 1-14, 17, 19
and 20 under 35 U.S.C. § 103 as being unpatentable over Yano
in view of Fujisawa.
The Examiner has failed to set forth a prima facie case.
It is the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the express teachings or suggestions found
in the prior art, or by implications contained in such
teachings or suggestions. In re Sernaker, 702 F.2d 989, 995,
217 USPQ 1, 6 (Fed. Cir. 1983). The Federal Circuit states
that “[t]he mere fact that the prior art may be modified in
the manner suggested by Examiner does not make the
modification obvious unless the prior art suggested the
desirability of the modification.” In re Fritch, 972 F.2d
1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n. 14 (Fed.
Cir. 1992), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984). It is further established that
“[s]uch a suggestion may come from the nature of the problem
to be solved, leading inventors to look to references relating
to possible solutions to that problem.” Pro-Mold & Tool Co.
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