Appeal No. 96-1349
Application 08/002,168
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 teachings 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, although the
examiner has made an
effort to identify the differences between the claimed invention
and the prior art, he has failed to properly support his
conclusion that such differences would have been obvious to one
having ordinary skill in the art.
The examiner’s position can be stated basically to be
that the modification of Davidson necessary to arrive at the
claimed invention would have been obvious to the artisan because
it would improve efficiency, performance and reliability of the
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