Ex parte GAO et al. - Page 3




          Appeal No. 96-1353                                                          
          Application 07/696,973                                                      


                                    THE REJECTION                                     
               Claims 1, 3 through 6, 8 through 55 and 57 through 89 stand            
          rejected under 35 U.S.C. § 103 as being unpatentable over Jasper            
          in view of Ashok and MacKay.                                                
               The rejection is explained in the Examiner's Answer.                   
               The opposing viewpoints of the appellants are set forth in             
          the Brief and the Reply Brief.                                              


                                       OPINION                                        
               The rejection in this case is that the subject matter of the           
          claims is obvious under 35 U.S.C. § 103.  The test for                      
          obviousness is what the combined teachings of the prior art would           
          have suggested to one of ordinary skill in the art.  See In re              
          Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).  In               
          establishing a prima facie case of obviousness under 35 U.S.C.              
          § 103, it is incumbent upon the examiner to provide a reason why            
          one of ordinary skill in the art would have been led to modify a            
          prior art reference or to combine reference teachings to arrive             
          at the claimed invention.  See Ex parte Clapp, 227 USPQ 972, 973            
          (Bd. Pat. App. & Int. 1985).  To this end, the requisite                    
          motivation must stem from some teaching, suggestion or inference            
          in the prior art as a whole or from the knowledge generally                 
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