Appeal No. 96-1920
Application 08/218,136
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These
showings by the 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).
The examiner has addressed the recitations of these
claims and the obviousness of the differences between these
claims and Takahashi ’785 on pages 8-10 of the answer.
Although appellant’s argument that Takahashi ’785 is deficient
has been decided adversely to appellant as discussed above,
appellant also argues that there is no suggestion to combine
the teachings of Takahashi ’785 with Furukawa except for the
examiner’s improper hindsight suggestion [brief, pages 19-22].
The examiner responds that the references are combinable
because both references deal with the subject matter of
controlling steering. Appellant argues that the examiner’s
reasoning does not establish a prima facie case of
obviousness.
We agree with appellant. In our view, the manner in
which Takahashi ’785 and Furukawa control steering is so
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