Appeal No. 96-3333
Application 08/295,194
the art." In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
In regard to the 35 U.S.C. § 103 rejection, the Examiner has failed to set forth a
prima facie case. 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 express teachings or
suggestions found in the prior art, or by implications contained in such teachings or
suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).
"Additionally, when determining obviousness, the claimed invention should be considered
as a whole." Para-Ordnance Mfg. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1087, 37
USPQ2d 1237, 1239 (Fed. Cir. 1995), cert. denied, 117 S.Ct. 80 (1996) citing W. L.
Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309 (Fed.
Cir. 1983), cert. denied, 469 U.S. 851 (1984).
The Federal Circuit states that "[t]he mere fact that the prior art may be modified in
the manner suggested by the Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In re Fritch, 972 F.2d 1260, 1266
n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992), citing In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). We note that
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007