Ex parte KANO et al. - Page 8




          Appeal No. 97-2504                                                          
          Application 08/200,707                                                      


          17, 148 USPQ 459, 467 (1966), and to provide a reason why one               
          having ordinary skill in the pertinent art would have been led to           
          modify the prior art or to combine prior art references to arrive           
          at the claimed invention.  Such reason must stem from some                  
          teaching, suggestion or implication in the prior art as a whole             
          or knowledge generally available to one having ordinary skill in            
          the art.  Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,               
          1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825           
          (1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,             
          776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.                
          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).                                                
          With respect to the rejection of claim 1 as unpatentable                    
          over the teachings of Cocco and Sugaya, the examiner basically              
          relies on Cocco as teaching the claimed invention except for the            
          white ink receptive layer located between the adhesive layer and            
          the colored layer [answer, pages 4-5].  The examiner relies on              
          Sugaya for supplying this teaching, and the examiner submits that           

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