Appeal No. 95-3582
Application 08/179,419
a modification would have been obvious. Instead, it is well
settled that in order to establish a prima facie case of
obviousness the prior art teachings must be sufficient to
suggest to one of ordinary skill in the art making the
modification needed to arrive at the claimed invention. See,
e.g., In re Lalu, 747 F.2d 703, 705, 223 USPQ 1257, 1258 (Fed.
Cir. 1984). The examiner, however, has provided no factual
basis whatsoever for concluding that the modification proposed
would have been obvious. See, e.g., In re GPAC Inc, 57 F.3d
1573, 1582,
35 USPQ2d 1116, 1123 (Fed. Cir. 1995) and In re Warner, 379
F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied,
389 U.S. 1057 (1968).
As the examiner apparently recognizes, there is nothing
in Wismer or Raiken (additionally relied on in the rejection
of claims 26-34) which would overcome the deficiencies of
Honkanen.
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