Ex parte EHRLICH - Page 5




          Appeal No. 96-3263                                                          
          Application No. 08/363,594                                                  


          35 U.S.C.  103.  Our reasoning for this determination follows.             


               In rejecting claims under 35 U.S.C.  103, the examiner                
          bears the initial burden of presenting a prima facie case of                
          obviousness.  In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955,           
          1956 (Fed. Cir. 1993).  A prima facie case of obviousness is                
          established by presenting evidence that the reference teachings             
          would appear to be sufficient for one of ordinary skill in the              
          relevant art having the references before him or her to make the            
          proposed combination or other modification.  See In re Lintner, 9           
          F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).  Furthermore, the           
          conclusion that the claimed subject matter is prima facie                   
          obvious must be supported by evidence, as shown by some objective           
          teaching in the prior art or by knowledge generally available to            
          one of ordinary skill in the art that would have led that                   
          individual to combine the relevant teachings of the references to           
          arrive at the claimed invention.   See In re Fine, 837 F.2d 1071,           
          1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).  Rejections based on            
           103 must rest on a factual basis with these facts being                   
          interpreted without hindsight reconstruction of the invention               
          from the prior art.  The examiner may not, because of doubt that            
          the invention is patentable, resort to speculation, unfounded               

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