Appeal No. 1996-2986
Application 08/348,625
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d
1443, 1444 (Fed. Cir. 1992).
As indicated by the cases just cited, the Examiner has 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.
With respect to the obviousness rejection of independent
claims 1, 6, and 25 based on Rietsch and “known practices in
the art”, the Examiner has never attempted to show how each of
the claimed limitations is suggested by the prior art.
Instead, in our view, the Examiner has attempted to combine
the general phase difference determination features of Rietsch
with unspecified “well known practices” (Answer, page 3) in
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