Appeal No. 95-0589
Application 07/873,150
Upon thorough review of the opposing arguments presented by
appellant and the examiner, we agree with appellant that the
examiner has failed to establish a prima facie case of
obviousness for the claimed subject matter. Accordingly, we will
not sustain the examiner's rejection.
It is well settled that the initial burden of establishing a
basis for denying patentability to a claimed invention rests upon
the examiner. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988). In rejecting claims under 35 U.S.C.
§ 103, it is incumbent upon the examiner to establish a factual
basis to support the legal conclusion of obviousness. Id. at
1074, 5 USPQ2d at 1598; In re Warner, 379 F.2d 1011, 1017, 154
USPQ 173, 178 (CCPA 1967). In so doing, the examiner is required
to provide a reason why one having ordinary skill in the art
would have been led to modify a prior art reference to arrive at
the claimed invention. The requisite motivation must stem from
some teaching, suggestion or inference in the prior art as a
whole or from knowledge generally available to one having
ordinary skill in the art. Uniroyal, Inc. v. Rudkin-Wiley Corp.,
837 F.2d 1044, 1050-52, 5 USPQ2d 1434, 1438-40 (Fed. Cir. 1988).
In the present case, the examiner concedes that although
Okamoto discloses a phase-shifting mask having a sub-space
between the light shielding portion and the phase-shifting
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