Appeal No. 96-3728
Application No. 08/132,078
to carry his initial burden of establishing that it would have
been prima facie obvious for one with ordinary skill in the
art to combine the teachings of these references in such a
manner as to result in a method which corresponds to the one
defined by independent claim 22. Indeed, a review of the
examiner’s exposition of this rejection on pages 4 and 5 of
the answer reveals a failure on the examiner’s part to even
express a conclusion of obviousness much less the rationale
therefore with respect to a combination of the applied
reference teachings. Further, it is particularly unclear to
us why one with ordinary skill in the art would combine the
seemingly disparate methods of Gutterman and Burroughs, as the
examiner seems to implicitly propose, without impermissibly
using the appellants’ own disclosure as a guide to thereby
produce a method having the steps recited in the claim under
review. It follows that we also can not sustain the
examiner’s section 103 rejection of claims 22 through 25 as
being unpatentable over Gutterman in view of Burroughs and
Fayling.
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