Appeal No. 96-3564
Application 08/274,133
lower luminance when going from the normal to the highlight mode. (See brief at page 8.)
Appellants again argue the differences between the admitted prior art and the claimed
invention concerning same background and increasing contrast while decreasing
luminance. (See brief at page 9.)
We find that the examiner has not met the burden of setting forth a prima facie case
of obviousness in rejecting claims 10, 17, 26, 30 and 33. Each of independent claim
contains similar limitations with respect to luminance and contrast. Our reviewing court
has stated that obviousness is tested by "what the combined teachings of the references
would have suggested to those of ordinary skill in 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)
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