Appeal No. 95-3290
Application 08/062,156
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.
In our view, each of the independent claims recites
subject matter that the examiner has asserted is taught by the
applied prior art, but we are unable to find such teachings in
the applied prior art. Thus, there are differences between
the claimed invention and the teachings of the applied prior
art which have gone unrecognized by the examiner. Since the
examiner has not identified these differences, the rejection
fails to provide arguments as to why these differences would
have been obvious to one having ordinary skill in the art.
Therefore, the prima facie case of obviousness has not been
properly established for these claims.
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