Appeal No. 2001-1186
Application No. 08/819,609
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).
With respect to the Examiner’s 35 U.S.C. § 103(a) rejection
of independent claims 1 and 9, Appellants assert that the
Examiner has failed to establish a prima facie case of
obviousness since all of the limitations of claims 1 and 9 are
not taught or suggested by the applied prior art references. In
particular, Appellants contend (Brief, pages 10 and 11; Reply
Brief, pages 1 and 2) that, in contrast to the applied prior art
references, the appealed claims 1 and 9 require the derivation of
an algorithm from either at least three parameters and the known
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