Ex parte MUIRHEAD - Page 6




          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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