Ex parte SHINBASHI et al. - Page 5




          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).                
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