Appeal No. 97-0740
Application 08/144,818
obviousness. In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993); In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). In order to meet this burden the examiner must
establish why one having ordinary skill in the art would have
been led to the claimed invention by the express or applied
suggestions found in the prior art. See In re Sernaker, 702
F.2d 989, 994, 217 USPQ 1, 5 (Fed. Cir. 1983). Only if that
burden is met does the burden of coming forward with evidence
or arguments shift to the appellant. In re Oetiker at 977 F.
2d 1445, 24 USPQ2d 1444. If the examiner fails to establish a
prima facie case the rejection is improper and will be
overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988).
It is our opinion that the examiner has failed to set
forth a prima facie case of obviousness in this case. First,
it is unclear from the examiner’s answer how the various
disparate teachings of the references would be combined. In
addition, while Gordin discloses that a collapsible lighting
system may be transported on the bed of the truck, the
lighting system does not form a package when folded that fits
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