Appeal No. 96-0797
Application No. 08/089,962
Dor 4,010,239 Mar. 1,
1977 Jankura et al. (Jankura) 5,168,065
Dec. 1, 1992
Appellant’s admission at pages 8 and 11 of the specification
(hereinafter referred to as "the admitted prior art").
Claims 1 through 11 stand rejected under 35 U.S.C. § 103
as unpatentable over the combined teachings of Jankura and the
admitted prior art.
We reverse.
The examiner has the initial burden of supplying the
factual basis to support the § 103 rejection. In re Warner,
379 F.2d 1011, 1016, 154 USPQ 676, 678 (CCPA 1967). The
burden cannot be met simply by showing that each element of
the claimed invention was separately known in the art at the
time the instant application was filed. See Hartness Int'l,
Inc. v. Simplimatic Eng'g Co., 819 F.2d 1100, 1108, 2 USPQ2d
1826, 1832 (Fed. Cir. 1987). The prior art relied upon by the
examiner must suggest the desirability of the combination.
In re Hoch, 428 F.2d 1341, 1342 n. 3, 166 USPQ 406, 407 n. 3
(CCPA 1970). Since it has not been positively included in the
statement of the rejection, we will not consider it in
evaluating the examiner’s § 103 rejection.
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