Appeal No. 96-3053
Application 08/113,194
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, the examiner has not
properly addressed the first responsibility so that it is
impossible that the second responsibility has been successfully
fulfilled.
With respect to claim 9, we find that the examiner has
not properly addressed the differences between the invention as
recited in the claim and the teachings of Hassett. One
particular aspect of the invention as recited in claim 9 is that
there must be an automatic transfer of funds between different
toll collection authorities. Although the examiner alleges that
Hassett performs this function, we fail to find this teaching in
Hassett.
The Hassett toll collection system merely suggests that a
given in-vehicle component (IVC) may be operative with a
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