Appeal No. 96-0113
Application 07/848,779
See the protest under 37 CFR 1.191(a) for
detail[ed] explanation of the 35 USC 103 rejections.
Although Daly, or Sullivan et al and Parker et al
do not recite the set of patterns being generated
sumultaneously, the program shows in Sullivan et al
'517 indicating that the patterns can be generated by
computer simultaneously. It would have been obvious to
generate the patterns sumultaneously by a computer as
recited in the claims.
Although the claims 1-8 and 11-18 are all different, the
examiner referred to them as if they were the same by noting only
a common difference between all of the rejected claims and the
applied prior art. That is so despite the examiner's expressly
ackowledging (answer at 3) that under Graham v. John Deere Co.,
383 U.S. 1 (1966), the factual inquiries needed for establishing
obviousness under 35 U.S.C. § 103 include "ascertaining the
differences between the prior art and the claims at issue."
Without having ascertained and made known the findings as to all
differences between each claim and the prior art, the examiner
could not have conducted an appropriate obviousness analysis
under 35 U.S.C. § 103 for the claims. Neither can we simply
regard that the burden has shifted to the applicant to point out
differences between the claimed invention and the prior art and
why the differences are not such that the claimed invention as a
whole would not have been obvious over the applied prior art.
The initial burden is on the examiner. We have a duty to ensure
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