Appeal No. 96-1406
Application No. 08/054,074
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).
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 been the result of an
obvious modification of the prior art. In our view, the
examiner has not properly addressed his first responsibility
so that it is impossible that he has successfully fulfilled
his second responsibility.
We agree with appellants that neither Hatada nor
LeBlanc teaches the claimed plurality of coupling chips as
recited in claim 1. It is also clearly apparent that the
collective teachings of these references cannot suggest
something which is not apparent from either of the references.
There simply is no suggestion in the applied prior art that a
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