Appeal No. 95-2911
Application 07/814,693
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the briefs and answer for the 2 3
respective details thereof.
OPINION
We will not sustain the rejection of claims 5 and 8 through
10 under 35 U.S.C. § 103.
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). "Additionally, when determining obviousness,
the claimed invention should be considered as a whole; there is
2Appellant filed an appeal brief on July 18, 1994. We will
refer to this appeal brief as simply the brief. Appellant filed
a response to the new ground of rejection on December 30, 1994.
We will refer to this response as the reply brief.
3The Examiner responded to the brief with an Examiner's
answer, dated October 14, 1994. We will refer to the Examiner's
answer as simply the answer. We note that the answer contains a
new ground of rejection rejecting claims 5 and 8 through 10 under
35 U.S.C. § 103 as being unpatentable over Kato, Aruga, Tanaka
and Inoue. The Examiner responded to the reply brief with a
supplemental Examiner's answer dated April 24, 1996. We will
refer to the Supplemental Examiner's answer as simply the
supplemental answer.
4
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