Appeal No. 96-2693
Application No. 08/018,972
claims
5 through 12 stand or fall with claims 1 and 7 we find that
PKZIP anticipates these claims as well.
The Examiner has set forth a prima facie case of
obviousness under 35 U.S.C. § 103 for claims 3 and 4. It is
the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the reasonable teachings or suggestions found in
the prior art, or by a reasonable inference to the artisan
contained in such teachings or suggestions. In re Sernaker,
702 F.2d 989, 995, 217 USPQ
1, 6 (Fed. Cir. 1983).
With regard to the rejection of claims 3 and 4 under
35 U.S.C. § 103 as being unpatentable over PKZIP in view of
The Microsoft Windows Resource Kit (MWRK), Appellants argue at
the bottom of page 9 of the brief that the teachings of the
prior art itself should suggest the claimed subject matter and
that the Examiner's prior art does not suggest the claimed
invention. The Examiner states in the final rejection that
one of ordinary skill in the art would know that the type of
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