Appeal No. 96-0750
Application 07/944,561
denied, 475 U.S. 1017 (1986); ACS Hospital Systems, Inc. v.
Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933
(Fed. Cir. 1984). These showings by the examiner are an
essential part of complying with the burden of presenting a
prima facie case of obviousness. Note In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
As indicated by the cases just cited, the examiner has
at least two responsibilities in setting forth a rejection
under 35 U.S.C. § 103. First, the examiner must identify all
the differences between the claimed invention and the teach-
ings of the prior art. Second, the examiner must explain why
the identified differences would have resulted from an obvious
modification of the prior art. In our view, the examiner has
not properly identified all the differences between claim 1
and the teachings of Rhodes so that the rejection lacks an
explanation as to why at least one of the differences would
have been obvious.
Appellants’ initial argument is that the examiner has
failed to establish a prima facie case of obviousness. We
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