Appeal No. 94-1495
Application 07/972,342
the Noll reference should not have been part of the examiner's
statement of the rejection. In re Hoch, 428 F.2d 1341,
1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970) [Where a reference is
relied on to support a rejection, whether or not in a “minor
capacity”, there would appear to be no excuse for not positively
including the reference in the statement of the rejection.]
The Patent and Trademark Office has the burden under 35
U.S.C. § 103 of establishing a prima facie case of obviousness.
In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984). This burden can be satisfied when the PTO presents
evidence, by means of some teaching, suggestion, or inference
either in the applied prior art or our generally available
knowledge, that would appear to have suggested the claimed
subject matter to a person of ordinary skill in the art or would
have motivated a person of ordinary skill in the art to combine
the applied references in the proposed manner to arrive at the
claimed invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988); Carella v. Starlight Archery Pro
Line Co., 804 F.2d 135, 140, 231 USPQ 644, 647 (Fed. Cir. 1986);
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); In re Rinehart, 531 F.2d 1048, 1051-1052, 189
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