Appeal No. 95-3710 Application 07/621,005 paragraph. See In re Hyatt, 708 F.2d 712, 715, 218 USPQ 195, 197 (Fed. Cir. 1983) and In re Borkowski, 422 F.2d 904, 909, 164 USPQ 642, 645-46 (CCPA 1970). On page 3 of the answer, the Examiner states that it is not clear whether claim 6 recites a switching unit because of the claim language "the switching unit, when mounted at one of the second locations." When reviewing the whole claim in light of the specification, it is clear that the claim is directed to an electrical wiring arrangement and the switching unit is not a positively recited element of the claim. The claim is only directed to a wiring arrangement which is capable of accommodating a switching unit but does not require a switching unit to be an element of the claim. The indefiniteness is reversed. In regard to the rejection 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). 5Page: Previous 1 2 3 4 5 6 7 8 NextLast modified: November 3, 2007