Appeal No. 1996-2893
Application 08/370,153
See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual determinations set forth in Graham v.
John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (CCPA 1966), and to provide a
reason why one having ordinary skill in the pertinent art would have been led to modify the
prior art or to combine prior art references to arrive at the claimed invention. Such reason
must stem from some teaching, suggestion or implication in the prior art as a whole or
knowledge generally available to one having ordinary skill in the art. Uniroyal, Inc. v.
Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert.
denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776
F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986);
ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 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).
A: Regarding Rejection of Claims 1, 4-6, 9-14
The examiner has rejected these claims over Boning in view of Dietz and Metz.
We take claim 1 as the exemplary claim. The examiner states that Boning shows the
spark plug structure having a light guide in the center. Dietz is used to supply the lens to
replace the pick up tip 13 in Boning. Still further, the examiner uses Metz to supply to the
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